After claiming, or late claiming, is the practice of filing a US
patent application
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...
after the publication by a third party of a description of the same invention. This is possible in
US patent law
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
with regard to applications not subject to the
Leahy–Smith America Invents Act, since an inventor has one year after the publication of the description of an invention to get a patent application on file.
In order to get the patent, however, the inventor must
submit a declaration supported by evidence that he or she conceived of the invention before the third-party publication. The inventor must also provide evidence that he or she was diligent in either
reducing the invention to practice In United States patent law, the reduction to practice is the step in the formation of an invention beyond the conception thereof. Reduction to practice may be either actual (the invention is actually carried out and is found to work for its intende ...
or in filing the patent application.
After claiming is not available in applications examined under the Leahy–Smith America Invents Act, with narrow exceptions relating to disclosure by the inventor or a joint inventor or by someone who had obtained the subject matter from the inventor or a joint inventor.
Example
On December 28, 1995, a patent application by Synteni (now Incyte Genomics) WO/95/35505 was published describing a
microarray
A microarray is a multiplex lab-on-a-chip. Its purpose is to simultaneously detect the expression of thousands of genes from a sample (e.g. from a tissue). It is a two-dimensional array on a solid substrate—usually a glass slide or silicon t ...
invention. A competitor,
Affymetrix
Affymetrix is now Applied Biosystems, a brand of DNA microarray products sold by Thermo Fisher Scientific that originated with an American biotechnology research and development and manufacturing company of the same name. The Santa Clara, Califor ...
, filed a patent application describing almost exactly the same invention within six months. This patent application was granted as . Affymetrix then sued Synteni for
patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may v ...
. The case was eventually settled with the parties
cross-licensing A cross-licensing agreement is a contract between two or more parties where each party grants rights to their intellectual property to the other parties.
Patent law
In patent law, a cross-licensing agreement is an agreement according to which two ...
their patents.
Bergman et al., "Evaluating the risk of patent infringement by means of semantic patent analysis: the case of DNA chips", ''R&D Management'' 38, 5, 2008. p 552
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See also
*Patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
*Patent ambush A patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a standard, about a patent that the member or the member's company owns, has pending, or intends to file, ...
*Submarine patent
A submarine patent is a patent whose issuance and publication are intentionally delayed by the applicant for a long time, which can be several years, or a decade.
References
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United States patent law