Public Use Considerations During Mobile App Development

Public Use Considerations During

Mobile App Development

March 19

_{, 2015}

Jeff Ranck Garrett Hall John Collins

Prior Art Under the AIA

• Under the AIA, prior art includes anything “in a

printed publication” or “in public use” or “on

sale” “or otherwise available to the public” before

the effective filing date of the invention.

• Unless:

– The disclosure was within one year of the filing date;

and

Prior Art before the AIA

Disclosure _{Pat App}

Prior Art Zone

Exceptions:

1. Anything up to one year before could be removed by showing

prior invention

Prior Art under the AIA

Disclosure _{Pat App}

Prior Art Zone

Exceptions:

1. The inventors disclosed “it” (1 yr. limit)

2. Some who got the information from the inventors disclosed “it” (1 yr. limit) 3. The inventors disclosed “it” first

4. Someone who got the information from the inventors disclosed “it” first 5. There was common ownership

Oh, One Other Thing

Inventors Disclosure Disclosure Pat App

Sample Fact Patterns

1. Inventors: A, B 1. Authors: A, B, C

2. C works for GreatCo

3. C works on the same team 4. C signs declaration he was describing A & B’s invention

6 months

Application: GreatCo Reference: Journal Article

Sample Fact Patterns

1. Inventors: A, B 1. Describes a new feature of GreatCo’s

nextgen product. Author: D

2. The article states D is a journalist working for QuickNews.

3. C discussed the new feature at the

annual GreatCo Technology Conference the same month the news item appeared 4. C signs a declaration that A & B created

the feature she was describing

5. You have a copy of C’s presentation 6. QuickNews sent representatives to the

conference

7. D appears on the list of conference attendees

6 months

Application: GreatCo Reference: Short News Item

Tracking Disclosures / Evidentiary Issues

• Education, Education,

Education

• Capture required information

at time of disclosure

• Should be part of standard

business practices

• Revisit document retention

policies

• Disclosure agreements (NDA

and Further Disclosure

Agreements)

• Consider using “disclosure

notebooks”

1. Timing

• Date of disclosure

2. Content

• Copy of the disclosure

3. Origin

• Authorship of all

disclosures

• Circumstances of the

disclosure

4. Communication

• Copy of disclosure

communications

Public Use - 35 U.S.C. §102(a)(1)

(a)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;

Example: Mobile App Development Process

App

Development Sign up w/ App Store to App Store Upload App

Testing & Approval by

App Store

App Available in App Store

“Invention” under 35 U.S.C. §102

• “Invention” for purposes of the on-sale bar need only be

“ready for patenting” and need not be reduced to

practice, Pfaff v. Wells Electronics Inc., 525 U.S. 55, 60

and 67 (1998).

• “Ready for patenting” standard applies to both “public

use” as well as “on-sale” bar because “invention”

modifies both public use and on-sale, Invitrogen Corp.

v. Biocrest Manufacturing, L.P., 424 F.3d 1374, 1379

Test for “Public Use”

• “

The proper test for the public use prong of the § 102(b) statutory bar is

whether the purported use: (1) was accessible to the public; or (2) was

commercially exploited.” Invitrogen Corp. v. Biocrest Manufacturing, L.P.,

424 F.3d 1374, 1380 (Fed. Cir. 2005).

• Following the court’s analysis, the test for the public use prong includes

the consideration of:

o the nature of the activity that occurred in public; o commercial exploitation;

o evidence relevant to experimentation; o public access to the use; and

Commercial Use

• “Commercial exploitation is a clear indication of public use, but

it likely requires more than, for example, a secret offer for

sale.” Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d

1374, 76 USPQ2d 1741 (Fed. Cir. 2005)

• “[T]he intent of [invalidating claims based on commercial use] is

to preclude attempts by the inventor or his assignee to profit

from commercial use of an invention for more than a year

before an application for patent is filed.” D.L. Auld Co. v.

Chroma Graphics Corp., 714 F.2d 1144, 1147, 219 USPQ 13,

MPEP 2133.03(e)(1) II - Commercial Exploitation

(A) Preparation of various contemporaneous “commercial”

documents, e.g., orders, invoices, receipts, delivery schedules,

etc.;

(B) Preparation of price lists;

(C) Display of samples to prospective customers;

(D) Demonstration of models or prototypes;

(E) Use of an invention where an admission fee is charged; and

(F) Advertising in publicity releases, brochures, and various

Public Access - Scope of Disclosure

Egbert v. Lippmann, 104 U.S. 333 (1881):

• “[W]hether the use of an invention is public or private does not

necessarily depend upon the number of persons to whom it is

known.”

• “If an inventor, having made his device, gives or sells it to

another, to be used …, without limitation or restriction, or

injunction of secrecy, and it is so used, such use is public, even

though the use and the knowledge of the use may be

confined to one person.”

Public Access – Use Restrictions and Control

• “Public use” occurs “when the inventor allows another person to use the

invention without limitation, restriction or obligation of secrecy to the

inventor.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed.

Cir. 1983).

• Beachcombers vs. Wildewood Creative Products, Inc., 31 F.3d 1154 (Fed.

Cir. 1994): demonstration at party considered public use because inventor

"made no efforts to conceal the device or keep anything about it secret."

Obligation of Confidentiality

• “[A]n activity (such as a sale, offer for sale, or other commercial activity) is

secret (non-public) if, for example, it is among individuals having an

obligation of confidentiality to the inventor.” (See pp. 11062-11063,

11075 of USPTO Examination Guidelines (2/14/13))

• “The presence or absence of a confidentiality agreement is not itself

determinative of the public use issue, but is one factor to be considered

along with the time, place, and circumstances of the use which show the

amount of control the inventor retained over the invention.” Moleculon

Research Corp.v. CBS, Inc., 793 F.2d 1261, 1265, 229 USPQ 805, 809

Mobile App Development Process

App

Development Sign up w/ App Store to App Store Upload App

Testing & Approval by

App Store

App Available in App Store

iOS Developer Program License Agreement

10.3 Information Submitted to Apple Not Deemed Confidential

Apple works with many application and software developers and some of their products may be similar to or compete with Your Applications. Apple may also be developing its own similar or competing applications and products or may decide to do so in the future. To avoid

potential misunderstandings, Apple cannot agree, and expressly disclaims, any

confidentiality obligations or use restrictions, express or implied, with respect to any information that You may provide in connection with this Agreement or the Program,

including information about Your Application, Licensed Application Information and metadata (such disclosures will be referred to as “Licensee Disclosures”). You agree that any such Licensee Disclosures will be non-confidential. Apple will be free to use and disclose any Licensee Disclosures on an unrestricted basis without notifying or compensating You. You release Apple from all liability and obligations that may arise from the receipt, review, use, or disclosure of any portion of any Licensee Disclosures. Any physical materials You submit to Apple will become Apple property and Apple will have no obligation to return those materials to You or to certify their destruction

Windows Store App Developer Agreement

8) CONFIDENTIALITY. During the term of this Agreement and for five (5) years after, the recipient of Confidential Information under this Agreement will hold in confidence, and will not use or disclose any of the other party's Confidential Information to a third party,

except contractors who are performing on the receiving party's behalf and only subject to confidentiality terms at least as protective as this section. "Confidential Information"

means all information that a party designates as confidential, or a reasonable person knows or reasonably should understand to be confidential. If Microsoft exposes you to any customer personal information, then between you and Microsoft, that personal

information is Microsoft Confidential Information and you will return to Microsoft, or destroy that information, immediately upon Microsoft's request. Confidential Information does not include information that is or becomes known to the receiving party without a breach of this agreement or any other confidentiality obligation owed to a disclosing party. If you have any questions as to what comprises Microsoft Confidential Information, you will consult with

Microsoft. This section does not prohibit either party from responding to lawful requests from law enforcement authorities.

Google Play Developer Distribution Agreement

No explicit reference to Confidentiality or Non-Disclosure of submitted

developer information.

Google Play Developer Distribution Agreement

5. License Grants

5.1 You grant to Google a nonexclusive, worldwide, and royalty-free license to: reproduce,

perform, display, and use the Products for administrative and demonstration purposes in

connection with (i) the operation and marketing of the Store; (ii) the marketing of devices and services that support the use of the Products, and (iii) making improvements to the Android platform.

App Store Break Down

App Store Public Use?

Apple Expressly non-confidential and _{un-restricted}

Windows Confidentiality is term of _agreement

A European Perspective

• Article 54 EPC states that an invention shall be considered

to be new if it does not form part of the state of the art.

• The state of the art is defined as everything made available

to the public by means of a written or oral description, by

use, or in any other way before the date of filing.

• The public comprises any person free to use the information

or disclose it to another – a person bound by an explicit or

implicit duty of confidence is not a member of the ‘public’

A European Perspective

• Subject-matter described in a document can only be

regarded as having been made available to the public, and

therefore as comprised in the state of the art pursuant to Art.

54(1), if the information given therein to the skilled person is

sufficient to enable him, at the relevant date of the document

(see G-VI, 3), to practise the technical teaching which is the

subject of the document, taking into account also the general

knowledge at that time in the field to be expected of him (see

T 26/85, T 206/83 and T 491/99)

• Secret prior use is not making available to the public

• If the invention is made available, it matters not if no one saw

it

Example 1

• A press for producing light building (hard fibre) boards was installed in a factory shed. Although the door bore the notice "Unauthorised persons not admitted", customers (in particular dealers in building materials and clients who were interested in purchasing light building boards) were given the opportunity of seeing the press although no form of

demonstration or explanation was given. An obligation to secrecy was not imposed as, according to witnesses, the company did not consider such visitors as a possible source of competition. These visitors were not genuine specialists, i.e. they did not manufacture such boards or

presses, but were not entirely laymen either. In view of the simple construction of the press, the essential features of the invention

concerned were bound to be evident to anyone observing it. There was therefore a possibility that these customers, and in particular the dealers in building materials, would recognise these essential features of the press and, as they were not bound to secrecy, they would be free to communicate this information to others.

Example 2

• A PhD thesis was placed on the shelf behind the counter of a university library following acceptance of the PhD and in preparation for

cataloguing and indexing before being placed on the shelf.

• Any person would have been free to request a copy of the thesis. • The fact that it was not yet catalogued or indexed or placed on the

shelves did not make it “unavailable to the public”.

• The fact that no one had requested the thesis does not change the fact that it was “available”.

Example 3

• xyz.com have invented a new search engine to search for images on the internet involving new image processing software. The search engine is accessed by a web page to enable users to enter a search query for images having certain features. The web page returns results to the users in the form of the usual links with thumbnail images.

• xyz.com operate the servers hosting the web site and search engine and the process performed by the search engine is known only to employees of xyz.com

• The web site has been live since 2011. • NOT PRIOR ART

• A skilled person could not have deduced from the information available publicly how the search engine operated to provide the results presented to the user.

• xyz.com could still file a patent for the search engine technology in Europe.

Questions?

Jeff Ranck