What extent of prior publication prevents patentability?

0

After winning a competition, the content of my submission was posted publicly. This involved:

  1. General descriptions of features of the product (e.g.allows for remote monitoring through an ai-camera).
  2. Mockup renders with annotated features (i.e. touchscreen)
  3. References to the possible technologies used in the idea (Artificial Intelligence)

I know want to develop a prototype and patent in the:

  1. USA 2) UK 3) Europe and other countries

Would this disqualify such a product from being patented? I understand at some point down the line a patent lawyer is required, but I want to have some idea if this prevents patentability before attempting to continue with the project.

user24548

Posted 2020-08-27T20:28:08.210

Reputation:

Is there some aspect of the product that is truly novel? Was the thing you think is novel (inventive) described publically. It really isn't clear from your question. Generalized descriptions and pictures aren't necessarily disclosing the specific invention that can be patented. – Eric S – 2020-08-27T21:23:38.257

The overall design was the application of multiple technologies optimised for a certain application/field. I am not sure whether these part would be patentable, as they are quite general. However, there was also one somewhat major part which was 'novel' but that was not disclosed at all (which was still a large part of the device). – None – 2020-08-27T21:43:51.170

1That which was not disclosed is potentially patentable. It’s really that simple. – Eric S – 2020-08-27T22:53:56.403

Answers

1

As Eric mentioned in a comment, the issue is degree of disclosure. It can be a subtle issue. A publication that explained a result but did not show how to achieve the result would not be novelty breaking.

If you think that might be your situation you can file an application and provide the USPTO with all of the information about the publication. Dates, content and the details of "publication".

There are strange edge cases in the US. A thesis that has been shelved in a university library by subject has been published but if the only public copy is shelved by student's name it is not published. A printed journal is published the day is is received in the mail by someone.

Another situation (not yours involves pubic demonstrations. In the case of a public demonstration (public = at least one person not under an agreement of confidentiality) the workings of a device need not be exposed in order for novelty to be broken - in the U.S.

That is becasue the section 102 wording is

  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;

A US patent can be barred (after 1 year) by offer for sale, public use, and sales that do not disclose anything about the invention. Demonstrations are public use unless the experimental exception can be shown.

Outside the U.S. a demonstration that divulged no inner workings would not break novelty.

A slide show at a conference with no handouts is probably not published. A poster on a wall at a conference that is up for a day (no handouts) might or might not be published. In some of the world demonstrations at a handful of specific trade shows is not initially novelty breaking.

And, very important for the US, there is a, sort of, one year grace period after publication.

George White

Posted 2020-08-27T20:28:08.210

Reputation: 21 648

Just to clarify, are you saying a public disclosure in the US that doesn't show how the device works is novelty breaking? – Eric S – 2020-08-28T15:00:07.270

No, it is a public demonstration that can sink you in the U.S. even without breaking novelty. It is very likely a "public use". see updated answer A big topic in the patent bar exam. – George White – 2020-08-28T18:29:12.193

Ah, I misread demonstration for disclosure. Since the OP stated the disclosure was descriptions and mock ups, no demonstration was performed. I think that part of the answer is perhaps a little bit ambiguous. – Eric S – 2020-08-28T20:33:45.430

The part about demonstrations is not relevant to the OP but is relevant to the broader topic of ways to hurt your patentablity. Do you think I should remove all that is not directly answering the Q? – George White – 2020-08-28T23:32:41.173

No, I found it interesting. Maybe just clarify the difference between disclosing and demonstrating. If I got confused, its at least a possibility that others might too. – Eric S – 2020-08-28T23:38:36.523

re-arranged order to focus on actual question first. – George White – 2020-08-29T00:18:11.063

Very clear now. Thanks. – Eric S – 2020-08-29T02:24:07.700

The public disclosure for a second or a week are a "threat" if they were recorded and proved by someone attempting to dis qualify the patent. As public information the usual requirement is less than year before patenting. Also be aware for first filer rule - than your public disclosure becomes prior art. – Moti – 2020-09-06T00:03:00.943

@Moti - The one year grace period is primarily a US thing, not a general rule, I would further respond to your comment if I understood it clearly. Can you clarify? – George White – 2020-09-06T05:10:01.287