patentIf an invention has been described in the prior art, a patent on that invention is not valid. Information kept secret, for instance, as a trade secret, is not usually prior art, provided that employees and others with access to the information are under a non-disclosure obligation. As a special exception, earlier-filed and unpublished patent applications do qualify as prior art as of their filing date in certain circumstances. (source)
Is it true that an earlier-filed and unpublished patent application qualifies as an exception? Are there any exceptions to this, and if so, what and why?
Generally, it must be published, or it’s not prior art. The prior art exception comes from 35 U.S.C. § 102, especially paragraphs (a) and (b):
(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
(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; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) Exceptions.—
(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(emphasis added). Note the words “published or deemed published.” Generally, if it’s secret, it’s not prior art, even if an application has been made.
That said, this is the kind of thing that really requires advice from a patent lawyer. I am not one, and none of this is legal advice, but my practical advice is: talk to a lawyer. Patents can cause you huge headaches if you get something wrong, and the fees you will pay now pale in comparison to what you will pay if you infringe a patent or fail to protect your own rights.
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