How can you file a patent application after you’ve disclosed your invention?

By doing so very quickly in a later time zone is the short, but not very illuminating, answer.  As a patent attorney I am forever telling and reminding clients that they must file a patent application before any non-confidential disclosure of their invention is made, otherwise any resulting patent will be invalid.  However in the recent case of Unwired Planet v Huawei the invention was disclosed by way of a proposal uploaded to an ETSI file server for consideration by a working group some 14 hours before the patent application was filed, yet still this was not considered to be “prior art” and the resulting patent was upheld.  How could this be?

The functioning of the patent world relies on a concept called priority, codified in the Paris Convention of 1883.  Crudely paraphrasing it, if you file an application in one country (usually your home country) this establishes a priority date and if you file an application for the same invention in another country within twelve months of the priority date that second application is treated as having been filed on the priority date. (NB the equivalent period for Designs and Trade Marks is only 6 months.)  In particular, provided that certain conditions are met, the second application only has to be novel and inventive relative to things that were publicly known before the priority date.  Something disclosed on the same date as the priority date does not count as prior art.

In Unwired Planet, the invention was described in a proposal by an Ericsson engineer that was uploaded to an ETSI server at 7.36 GMT 8th January 2008 and its availability announced by email so that a copy was downloaded a little over an hour later.  The priority filing was made in the US at 16.59 EST (21.59 GMT) the same day.  If the Ericsson document had been relevant prior art then the patent would have been knocked out completely.  As the patent was admitted to be essential to 4G LTE, it is unsurprising that Huawei and the other defendant, Samsung, argued very hard that it should be prior art.

Without delving too far into the depths of the legal argument, the key point is that to be prior art, the publication must have occurred before the priority date, not the actual time of the patent filing.  The priority date in this case was 8th January but the defendants argued that when the Ericsson document was uploaded to the server it was still 7th January in Hawaii.  The document could have been downloaded by someone in Hawaii so was available to the public on 7th January (at least in one time zone).  The Judge however rejected this, not because no one in Hawaii had downloaded the document, but because the relevant time zone was US Eastern Standard Time, i.e. that of Washington DC where the priority patent application was filed.  In that time zone the disclosure was made on 8th January and not before the priority date.

That only the date of a filing is relevant is perhaps more understandable from the view point of 1883 than in an era of practically instantaneous communications.  But this and the “same time zone” requirement does have the advantage of reducing slightly the pressure to file quickly.

John Leeming
J A Kemp (www.jakemp.com)
March 2016

About the Author

John Leeming, J A Kemp

John is a Partner and Patent Attorney at J A Kemp with specialisms in semiconductors, software, optics and designs.  With over 25 years of professional experience, John’s clients range from large multinationals to start-ups, including firms that have successfully progressed beyond the early stages to develop extensive patent filing programmes.  He is the primary contact at J A Kemp for UK and Community Registered Design matters.

https://uk.linkedin.com/in/johnleeming


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