Issue 1                                                                              March 2001

In this Issue

Invention Mining
Proactive identification of patentable ideas.

Interesting Patent Case
When is it too late to file?

IP Links

IP Glossary

Invention Mining
Proactive identification of patentable ideas
Don't find out the hard way that patents should be filed as early in the development process as possible. In the following case analysis by Patterson, Belknap we see that Monon has already paid significant legal fees to defend its patent from invalidation based on violating the statutory bar date. Monon's competitor, apparently wanting to replicated Monon's design, noticed that Monon's filing date was more than one year after the first sale and filed suit to have the patent invalidated so they could proceed.

{Note: the patent is nearly 20 years old and deals with building semi-trailers. Imagine the risk you run in the infinitely faster moving high technology arena!}

The district court agreed that Monon's application was filed too late, but on appeal things seem to be moving in Monon's direction. Whether or not they ultimately prevail is not the important point for us; instead we should learn from their experience. How can we protect ourselves from "filing too late" or, like it seems in this case, from appearing to have filed too late, opening ourselves up to the dollar and opportunity costs of a legal battle?

There are three things you can do, after checking with your attorney:

• Actively identify patentable ideas early in the product development cycle.

• Have a Non-Disclosure Agreement in place before all discussions with vendors and potential customers.

• State clearly the experimental and/or evaluative purpose of any alpha or beta test units delivered (sold or given) to potential customers, ideally as part of your Terms and Conditions.

While the NDA and Experimental Purpose statements are important to have, they are, at best, defensive weapons, to be brought out in court as Monon found out. And like any defense, they may or may not protect you. Actively identifying (and patenting) your ideas before (or soon after) release is, by definition, a way to avoid statutory bar date hassles. TechRoadmap's Invention Mining (SM) service works with your engineering staff to identify worthy ideas during, not after, the development process. Also, Invention Mining guides your engineers to know when they have enough data to submit a patent disclosure; TechRoadmap and your Patent Attorney can help you get protection even before the last bit of data is collected.

Remember - It is better to amend or file another patent application based on field test results than it is to wait for the results and miss the filing deadline.

Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc serves as an interface between companies and their legal counsel.

Interesting Patent Case
Experimental Use: Inequitable Conduct
by Patterson, Belknap, Webb & Tyler LLP   

Monon Corp. v. Stoughton Trailers, Inc., No. 00-1041 (Feb. 7, 2001). Opinion by Michel, joined by Rader and Schall. The district court held that Monon's patent, U.S. Patent No. 4,904,017, was invalid under 35 U.S.C. § 102(b) because it had been on sale more than one year prior to the application filing date. The district court determined that the sale was not an experimental use, and Monon appealed. The Federal Circuit reversed.

The '017 patent is directed to a trailer which contains cargo and is hauled over roads by large trucks, called tractors. The construction of the claimed trailer avoided the use of side posts, thereby allowing the trailer to accommodate 25 pallets of cargo instead of the normal 22. The design was made at the request of Continental Can, and in December 1983, Continental contracted with Monon to purchase one trailer "for $18,490, with the intention of purchasing an additional 300 once the trailer's durability had been proven in actual, normal use." The sample trailer was delivered in April 1984. "In December 1984, after the strength and durability of the plate trailer had been successfully proven, Continental ordered 300 plate trailers. Later, in February 1985, Monon received the first trailer back from Continental for inspection." Monon filed its patent application on February 26, 1985. 

According to the Federal Circuit, the evidence indicated that the use could be experimental. The testing conditions were appropriate and Monon continued to exercise control over the experimentation, as noted by the fact that Monon allowed Continental to use the trailer as it would in normal operation and thereafter tested the trailer. Accordingly, the Federal Circuit remanded the case for trial. Also, the Federal Circuit affirmed the district court's holding that there was no inequitable conduct because there was no showing of an intent to deceive by withholding information concerning the Continental sale or two references. 

This article is taken from Federal Circuit Review, a free weekly email communication from the Patent Practice Group at Patterson, Belknap, Webb & Tyler LLP. It is intended to be informative only and not to give legal advice or opinions. Any views expressed or implied are not necessarily those of Patterson, Belknap, Webb and Tyler LLP, its attorneys or clients.

© Patterson, Belknap, Webb & Tyler LLP 2000 All rights reserved. This document may be copied and distributed, so long as this is not done for profit, no text is changed and all pages are included.

IP Links
US Patent office Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked supplying a range of IP management services including portfolio analysis, deal-making, and process improvement.