One invention, two patents?

Two major battery manufacturers recently obtained rights under separate U.S. patents which apparently cover the same invention. The invention is a battery indicator, which when pressed shows the remaining power.

What must be decided now is whether the patents have been issued for the same invention. Technically, among other things, claims in one patent must be the same as the claims in the other patent.

Who came first? The problem points up the underlying U.S. philosophy that the first inventor (as defined by U.S. law) is entitled to obtain a U.S. patent on the invention. Others may be able to obtain patents on improvements, but not on the basic invention. However, the U.S. philosophy is different than that in other countries. In many other countries, the criteria is first-to-file not first-to-invent. Thus, outside the U.S. the first inventor may not obtain the patent if he or she files after a later inventor. This consideration has been the sticking point in many treaty negotiations.

How does one prove how, when, and under what circumstances the invention was made? Usually, witnessed laboratory notebooks set forth the invention, development, and related chronology. The inventor testifies to the chronology, invention, and development, and the witnessed documents corroborate the testimony.

USPTO as King Solomon? A trial-like procedure in the U.S. Patent and Trademark Office (USPTO), known as an interference, is intended to help establish who is the first inventor or who has priority. The issue of first inventor or priority can also be fought out in a court, usually in a patent-infringement trial. Here, litigants raise the issue of first inventor when arguing that the patent is invalid for not naming the proper inventor. In such a case, the USPTO is not a defendant.

To the patent-holding entities, the issue of whether the patent belongs to them is obviously significant, but first it must be established whether they do claim the same in- vention and whether one can prove that they are the first inventor.

USPTO procedures are intended to prevent two patents from issuing on the same invention. For the office to issue two patents on the same invention is unusual, to say the least, but mistakes are always possible. However, taking into consideration past circumstances, caution would be advisable before jumping to the conclusion that the USPTO made a mistake. Instead, the patents need to be reviewed critically.

Based upon the complexity of the interference problems and the size of the parties involved, one can only conclude that this is going to be a big and expensive problem which will take a long time to resolve.

Resolution could take many forms. One possibility is that the Patent Office can determine whether or not the patents are for the same invention and who is the first inventor. Another option would be for the parties to settle by using an appropriate cross-licensing arrangement. However, with respect to a cross-licensing arrangement, one must be cognizant of anti-trust violations.

Finally, the parties currently involved may have nothing to do with a third option for resolution, if a future invention eclipses the one in dispute. Should another player introduce a new product which would render the technology in question obsolete, it would effectively bypass the current innovation. Thus, despite the complexity and size of the case at hand, it is in the interest of all parties to resolve this question as quickly as possible.

Legal Questions

Q: Is an interference to determine inventorship complex?

A: Interferences are very rare, but when they do occur they are usually complex. Since interferences are not simple, they can be expensive proceedings, particularly when the stakes are high.

Q: In attempting to establish priority, what are the principal factors or criteria to consider?

A: Usually the first question to ask is "who is the first to conceive the invention?" Next, has the invention been reduced to practice or has it been abandoned? Laboratory notebooks and similar evidence usually establish the foregoing. While first to file is not the rule in the United States, there are procedural advantages from doing it first.

Q: What are the philosophical bases for the first-to-file and first-to-invent positions?

A: Both systems seek to achieve early public disclosure of the invention and use of the invention by the society. In addition to the above, first-to-invent supporters urge that the benefit of the first inventor owning the patented technology enhances early public disclosure and rewards the first inventor for his work. One might argue that the success of the United States economy may be related, at least in part, to this concept.

Q: Why should evidence of invention be corroborated?

A: It is with corroborated evidence that one can prove that he/she is the first inventor and entitled to the patent. Without corroboration, proof of invention will fail. Thus, it is a good practice to keep contemporaneous records of work and periodically have them witnessed and dated to be certain that the corroboration exists.