FIRST TO INVENT, BUT FAILED TO PATENT – WHAT CAN YOU DO NOW?
You invented a great process, but failed to file a U.S. patent application.
You have used this great process in your business to make candy bars. You keep the process secret so that no one else can determine what the process is.
Over many years, you make millions of candy bars using this great process.
Johnny Second Inventor, independently invents the same process, after you did, and is able to obtain a U.S. patent for it.
You get upset and tell everyone that you invented that process long ago and have been using it for many years.
Johnny, hears about this, and sues you for infringement of his patent.
You argue that Johnny should not be entitled to a patent because you are the first inventor and have been using the process in a business for many years.
Who wins?
Well, firstly, your earlier invention and prior secret commercial use of the process will most likely not invalidate Johnny’s patent. So Johnny, in all likelihood, will get to keep his patent.
Does that mean you have to pay Johnny for patent infringement?
If the America Invents Act applies, or if the process is a “method of doing or conducting business”, then you most likely will not have to pay Johnny for patent infringement.
Prior to the America Invents Act there was a defense to infringement for an earlier inventor relating to patents concerning a “method of doing or conducting business”.
The America Invents Act greatly expanded that to subject matter “…consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, …” 35 U.S.C. 273 (in part).
This provision of the America Invents Act expanding the prior commercial use defense, applies to U.S. patents issued on or after September 16, 2011.
In any case, if you have an invention that you are interested in patenting, or if you are accused of infringing someone else’s patent, you should consult a registered patent attorney, such as Walter J. Tencza, Jr., Esq. , PATENTNOW.COM®.
