Public Use Considerations During Mobile App Development

Transcription

1 Public Use Considerations During Mobile App Development March 19 th, 2015 Jeff Ranck Garrett Hall John Collins

2 Prior Art Under the AIA Under the AIA, prior art includes anything in a printed publication or in public use or on sale or otherwise available to the public before the effective filing date of the invention. Unless: The disclosure was within one year of the filing date; and

3 Prior Art before the AIA Disclosure Pat App Prior Art Zone 1 yr. Grace Period Exceptions: 1. Anything up to one year before could be removed by showing prior invention

4 Prior Art under the AIA Disclosure Pat App Prior Art Zone Exceptions: 1. The inventors disclosed it (1 yr. limit) 2. Some who got the information from the inventors disclosed it (1 yr. limit) 3. The inventors disclosed it first 4. Someone who got the information from the inventors disclosed it first 5. There was common ownership You have to be able to prove the exception

5 Oh, One Other Thing If the inventors disclose it first, the IT has to be the same Inventors Disclosure Disclosure Pat App

6 Sample Fact Patterns 6 months Reference: Journal Article Application: GreatCo 1. Authors: A, B, C 2. C works for GreatCo 3. C works on the same team 4. C signs declaration he was describing A & B s invention 1. Inventors: A, B

7 Sample Fact Patterns 6 months Reference: Short News Item Application: GreatCo 1. Describes a new feature of GreatCo s nextgen product. Author: D 2. The article states D is a journalist working for QuickNews. 3. C discussed the new feature at the annual GreatCo Technology Conference the same month the news item appeared 4. C signs a declaration that A & B created the feature she was describing 5. You have a copy of C s presentation 6. QuickNews sent representatives to the conference 7. D appears on the list of conference attendees 1. Inventors: A, B

8 Tracking Disclosures / Evidentiary Issues 1. Timing Date of disclosure 2. Content Copy of the disclosure 3. Origin Authorship of all disclosures Circumstances of the disclosure 4. Communication Copy of disclosure communications Education, Education, Education Capture required information at time of disclosure Should be part of standard business practices Revisit document retention policies Disclosure agreements (NDA and Further Disclosure Agreements) Consider using disclosure notebooks

9 Public Use - 35 U.S.C. 102(a)(1) (a)a person shall be entitled to a patent unless (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

10 Example: Mobile App Development Process App Development Sign up w/ App Store Upload App to App Store Testing & Approval by App Store App Available in App Store

11 Invention under 35 U.S.C. 102 Invention for purposes of the on-sale bar need only be ready for patenting and need not be reduced to practice, Pfaff v. Wells Electronics Inc., 525 U.S. 55, 60 and 67 (1998). Ready for patenting standard applies to both public use as well as on-sale bar because invention modifies both public use and on-sale, Invitrogen Corp. v. Biocrest Manufacturing, L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005).

12 Test for Public Use The proper test for the public use prong of the 102(b) statutory bar is whether the purported use: (1) was accessible to the public; or (2) was commercially exploited. Invitrogen Corp. v. Biocrest Manufacturing, L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005). Following the court s analysis, the test for the public use prong includes the consideration of: o o o o o the nature of the activity that occurred in public; commercial exploitation; evidence relevant to experimentation; public access to the use; and confidentiality obligations imposed on members of the public who observed the use.

13 Commercial Use Commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale. Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005) [T]he intent of [invalidating claims based on commercial use] is to preclude attempts by the inventor or his assignee to profit from commercial use of an invention for more than a year before an application for patent is filed. D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147, 219 USPQ 13, 15 (Fed. Cir. 1983)

14 MPEP (e)(1) II - Commercial Exploitation (A) Preparation of various contemporaneous commercial documents, e.g., orders, invoices, receipts, delivery schedules, etc.; (B) Preparation of price lists; (C) Display of samples to prospective customers; (D) Demonstration of models or prototypes; (E) Use of an invention where an admission fee is charged; and (F) Advertising in publicity releases, brochures, and various periodicals

15 Public Access - Scope of Disclosure Egbert v. Lippmann, 104 U.S. 333 (1881): [W]hether the use of an invention is public or private does not necessarily depend upon the number of persons to whom it is known. If an inventor, having made his device, gives or sells it to another, to be used, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and the knowledge of the use may be confined to one person.

16 Public Access Use Restrictions and Control Public use occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor. In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). Beachcombers vs. Wildewood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994): demonstration at party considered public use because inventor "made no efforts to conceal the device or keep anything about it secret."

17 Obligation of Confidentiality [A]n activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if, for example, it is among individuals having an obligation of confidentiality to the inventor. (See pp , of USPTO Examination Guidelines (2/14/13)) The presence or absence of a confidentiality agreement is not itself determinative of the public use issue, but is one factor to be considered along with the time, place, and circumstances of the use which show the amount of control the inventor retained over the invention. Moleculon Research Corp.v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809 (Fed. Cir. 1986).

18 Mobile App Development Process App Development Sign up w/ App Store Upload App to App Store Testing & Approval by App Store App Available in App Store App Developer Agreement

19 ios Developer Program License Agreement 10.3 Information Submitted to Apple Not Deemed Confidential Apple works with many application and software developers and some of their products may be similar to or compete with Your Applications. Apple may also be developing its own similar or competing applications and products or may decide to do so in the future. To avoid potential misunderstandings, Apple cannot agree, and expressly disclaims, any confidentiality obligations or use restrictions, express or implied, with respect to any information that You may provide in connection with this Agreement or the Program, including information about Your Application, Licensed Application Information and metadata (such disclosures will be referred to as Licensee Disclosures ). You agree that any such Licensee Disclosures will be non-confidential. Apple will be free to use and disclose any Licensee Disclosures on an unrestricted basis without notifying or compensating You. You release Apple from all liability and obligations that may arise from the receipt, review, use, or disclosure of any portion of any Licensee Disclosures. Any physical materials You submit to Apple will become Apple property and Apple will have no obligation to return those materials to You or to certify their destruction

20 Windows Store App Developer Agreement 8) CONFIDENTIALITY. During the term of this Agreement and for five (5) years after, the recipient of Confidential Information under this Agreement will hold in confidence, and will not use or disclose any of the other party's Confidential Information to a third party, except contractors who are performing on the receiving party's behalf and only subject to confidentiality terms at least as protective as this section. "Confidential Information" means all information that a party designates as confidential, or a reasonable person knows or reasonably should understand to be confidential. If Microsoft exposes you to any customer personal information, then between you and Microsoft, that personal information is Microsoft Confidential Information and you will return to Microsoft, or destroy that information, immediately upon Microsoft's request. Confidential Information does not include information that is or becomes known to the receiving party without a breach of this agreement or any other confidentiality obligation owed to a disclosing party. If you have any questions as to what comprises Microsoft Confidential Information, you will consult with Microsoft. This section does not prohibit either party from responding to lawful requests from law enforcement authorities.

21 Google Play Developer Distribution Agreement No explicit reference to Confidentiality or Non-Disclosure of submitted developer information.

22 Google Play Developer Distribution Agreement 5. License Grants 5.1 You grant to Google a nonexclusive, worldwide, and royalty-free license to: reproduce, perform, display, and use the Products for administrative and demonstration purposes in connection with (i) the operation and marketing of the Store; (ii) the marketing of devices and services that support the use of the Products, and (iii) making improvements to the Android platform.

23 App Store Break Down App Store Public Use? Apple Expressly non-confidential and un-restricted Windows Google Confidentiality is term of agreement No confidentiality obligation, and few restrictions on use

24 A European Perspective Article 54 EPC states that an invention shall be considered to be new if it does not form part of the state of the art. The state of the art is defined as everything made available to the public by means of a written or oral description, by use, or in any other way before the date of filing. The public comprises any person free to use the information or disclose it to another a person bound by an explicit or implicit duty of confidence is not a member of the public

25 A European Perspective Subject-matter described in a document can only be regarded as having been made available to the public, and therefore as comprised in the state of the art pursuant to Art. 54(1), if the information given therein to the skilled person is sufficient to enable him, at the relevant date of the document (see G-VI, 3), to practise the technical teaching which is the subject of the document, taking into account also the general knowledge at that time in the field to be expected of him (see T 26/85, T 206/83 and T 491/99) (from EPO Guidelines for Examination) Secret prior use is not making available to the public If the invention is made available, it matters not if no one saw it

26 Example 1 A press for producing light building (hard fibre) boards was installed in a factory shed. Although the door bore the notice "Unauthorised persons not admitted", customers (in particular dealers in building materials and clients who were interested in purchasing light building boards) were given the opportunity of seeing the press although no form of demonstration or explanation was given. An obligation to secrecy was not imposed as, according to witnesses, the company did not consider such visitors as a possible source of competition. These visitors were not genuine specialists, i.e. they did not manufacture such boards or presses, but were not entirely laymen either. In view of the simple construction of the press, the essential features of the invention concerned were bound to be evident to anyone observing it. There was therefore a possibility that these customers, and in particular the dealers in building materials, would recognise these essential features of the press and, as they were not bound to secrecy, they would be free to communicate this information to others. PRIOR ART

27 Example 2 A PhD thesis was placed on the shelf behind the counter of a university library following acceptance of the PhD and in preparation for cataloguing and indexing before being placed on the shelf. Any person would have been free to request a copy of the thesis. The fact that it was not yet catalogued or indexed or placed on the shelves did not make it unavailable to the public. The fact that no one had requested the thesis does not change the fact that it was available. PRIOR ART

28 Example 3 xyz.com have invented a new search engine to search for images on the internet involving new image processing software. The search engine is accessed by a web page to enable users to enter a search query for images having certain features. The web page returns results to the users in the form of the usual links with thumbnail images. xyz.com operate the servers hosting the web site and search engine and the process performed by the search engine is known only to employees of xyz.com The web site has been live since NOT PRIOR ART A skilled person could not have deduced from the information available publicly how the search engine operated to provide the results presented to the user. xyz.com could still file a patent for the search engine technology in Europe.

29 Questions? Jeff Ranck Garrett Hall John Collins