Washington  |  Intellectual Property

Re: Patentability when previously published?

Only a true inventor may apply for a patent (you must sign a declaration to that effect). So if you did not invent the "thing" yourself but merely saw it on a website then you could not truthfully sign the declaration. Also, in the United States, the application must be filed in the name of the inventor, not the company. You can file an assignment from yourself over to the company, but the application is still filed in the name of the inventor(s). With respect to non-US filings, regardless of the common foreign "first to file rules" or the ability to file directly in the name of the company (as opposed to the inventors), they still require you (or the company) to be the true inventor(s)....the idea must NOT have come from an outside source....so if you merely just saw the invention you would still not qualify.

Re: Patentability when previously published?

A very good question. Under the U.S. rules, you have one date from the date of publishing details of the invention or offering it for sale. A lot of things can be an offer for sale that do not seem like one, such as beta testing where any money changes hands (e.g., a sign-up fee). One exception is the doctrine of experimental use, but it is rarely applied. Experimental use basically involves public testing needed of the product to perfect the invention before it is well-defined enough for patenting. In the case that is most often used as an example, one inventor tested a road paving technology on a road for 10 years before applying for a patent. I do not recommend trying to use this doctrine though because it places a huge vulnerability around any patent you may get.

Regarding non-U.S. filing, most other countries require that you file before any public disclosure of the invention. I do not know of any other country that has the U.S. 1-year grace period. So, if you are a European company you can likely still apply for a patent in the U.S. but not in other countries.

Hope that helps.