On-Line Patent - A Cautionary Tale
By Ian Cockburn1
- Are Search Statements Submitted to Patent Databases Public Disclosure of an Invention?
To Search or not to Search, is That the Question? Or is it Something Else?
Perhaps the questions that should be asked are: Can search strings used during an on-line search be considered as a disclosure sufficient to invalidate a patent? How safe are your on-line searches from prying eyes? And, how accessible are your searches and search strings to public view? How safe are your saved searches?
In recent years, the world has been given new terms such as hacking, electronic eavesdropping, sniffing, IP spoofing, system snooping and phishing – all of which relate to the unauthorized acquisition of some form of digital communication. Electronic eavesdropping is defined as the intentional surveillance of data – via voice, fax, e-mail, mobile telephones, computer messaging etc, often for nefarious purposes, whereby an eavesdropper will intercept and log the message exchange between a client and a server.
Sadly, the interaction of the searcher and the major patent databases is conducted in an insecure environment and unscrupulous visitors to those sights are able to monitor and track that interaction. The phenomenon whereby unauthorized information concerning an individual or a company is purloined is increasing at a rate, which is proportional to our access to new digital technologies and on-line databases. The esoteric world of patents and intangible assets is not immune to this phenomenon and information, especially competitive intelligence about rival companies’ technology strategies has immense value.
The ability of hackers to intercept search strings on unsecured sites and therefore reveal sensitive information is very much in the realm of reality. There is also a very real danger that if you provide a full search statement to a publicly available database that there is a substantial risk that that search statement will, for all intents and purposes, be a publication of the invention. If the search statement contains details of inventive subject matter, submitting that search statement to a site such as the USPTO, EPO or PCT search sites might be fatal to your ability to obtain and maintain valid patent rights. At the very least, it might provide critically sensitive data about your companies future direction - data that can be used to reduce product-to-market lead times or negate hard won technology frontier advantages forged through innovative R & D.
Patents are all about protecting and commercializing technical information embedded in new products and processes. Any risk to those patent assets should be defended. Given the above, that search strings may fall into the public domain and cause future patentability problems, possibly resulting in the invalidity of a patent, and without relying on grace period provisions, perhaps the best solution is to file a Provisional Patent Application first and search later.
So, consider the advantages that the early filing of a robust provisional patent offers:
- It will secure your ability to gain full patent rights.
- It will negate damage to a patent asset due to patentability issues consequent to a search.
- It will reinforce commercial value of R & D to researchers.
- It will reduce the threat of employee exploitation or outside misappropriation.
If you have any thoughts, comments or additions to the above discussion please e-mail icockburn@piperpat.com to begin a dialogue, or conversely consult an IP professional to determine the best fit patent strategy for your firm.
Disclaimer: PIPERS endeavors to be as accurate as possible when preparing its articles and has taken all reasonable steps to ensure that the information contained herein is accurate. The contents of this article are for purposes of information only. If you require any clarification please seek the advice of an IP professional or contact http://www.piperpat.com/
1 The author is Web Editor, Manager Advertising & Marketing at PIPERS - Global, A Patent attorney Firm with Offices in the United Kingdom, New Zealand, Australia, Singapore and Malaysia. The views expressed in this article are those of the author and do not necessarily represent those of WIPO.
