New US law is patently bad news for inventors
The America Invents Act means any disclosure, intentional or otherwise, of a new product could result in the refusal of a patent
The Apple iPhone 4. Despite a leak which allowed the design of the prototype to be seen on the web, Apple was still able to secure a patent. Things are different now. Photograph: Eric Thayer/Reuters
On March 18th, 2010, an Apple engineer left what looked like an iPhone 3 in a German beer garden in Redwood, California. Another patron later picked it up from a barstool. The next morning, the phone didn’t work (having been disabled remotely) but the finder realised the device looked and felt a bit odd. He was able to remove the exterior, revealing a shiny prototype for the new iPhone 4 – a product Apple wasn’t intending to announce for months.
Up until that March evening, Apple had been notoriously successful at concealing its new designs. It would wait until just before unveiling a new product design to file a corresponding design patent application. For instance, Apple filed applications for the original iPhone only four days before it was announced in 2007; for the original iPod in 2001, the filing was one day before release.
The finder of the iPhone 4 tried calling Apple to return the phone, but no one called him back. About a month later, he sold the device to a website, which disassembled it, took pictures, and posted them on the Internet. But after the photos were posted, Apple’s lawyers jumped into action. That same day, Apple sent a letter to the website asking for its property back and filed a design patent application with the US Patent and Trademark Office (PTO). Filed at 11:55pm that night, US Design Patent D627,778 was eventually issued covering the design of the iPhone 4. All’s well that ends well.
Had this story played out in the past few weeks, it might not have had the same happy ending. On September 16th, 2011, the America Invents Act (AIA), a major modification to the Patent Act, was signed into law, making the kind of “public disclosure” the iPhone 4 experienced a real impediment to an inventor’s securing a patent.
Prior to the act, inventors in the US had a one-year grace period for all activities including sale, use, and public disclosure. In other words, a design could be shown, used, or sold and the inventor could still secure patent rights, provided that the application was filed within one year of the disclosure. This grace period is why Apple was still able to secure rights in the iPhone 4 and, importantly, also preserve rights in foreign countries.
As part of the AIA, on March 16th, 2013, the US adopted a first-inventor-to-file regime. Under this regime, a public disclosure (including publication, sale, or public use of a complete product design without filing for a design patent protection beforehand) will constitute a dedication of that design to the public, including competitors. The AIA includes a limited one-year grace period for certain disclosures by the inventor or obtained from the inventor; however, the exact boundaries of this grace period are uncertain and the federal courts will take many years to define them.
If the iPhone 4 scenario occurred today, under the new AIA, there would be many questions with unknown answers. For instance, did the finder or the website “obtain” the design from the inventor at Apple? Or does the fact that the engineer lost the prototype in public somehow break the disclosure chain back to the inventor?