A patent caveat, often shortened to caveat, was a
legal document
Legal instrument is a law, legal term of art that is used for any formally executed written document that can be formally attributed to its author, records and formally expresses a legally enforceable act, process, or contractual duty, obligation ...
filed with the
United States Patent Office
The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
.
History
Caveats were instituted by the
U.S. Patent Act of 1836, but were discontinued in 1909, with the
U.S. Congress
The United States Congress is the legislature of the federal government of the United States. It is Bicameralism, bicameral, composed of a lower body, the United States House of Representatives, House of Representatives, and an upper body, ...
abolishing the system formally in 1910.
A caveat was similar to a
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 ...
with a description of an
invention
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...
and
drawing
Drawing is a form of visual art in which an artist uses instruments to mark paper or other two-dimensional surface. Drawing instruments include graphite pencils, pen and ink, various kinds of paints, inked brushes, colored pencils, crayons, ...
s, but without examination for
patentable subject matter
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...
and without a requirement for
patent claim
In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define ...
s. A patent caveat was an official notice of intention to file a patent application at a later date. A caveat expired after one year, but could be renewed by paying an
annual fee of $10.
Caveats were similar to
provisional application
Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant ...
s used today in the
United States Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...
(USPTO) which also expire after one year. However, provisional applications today are non-renewable under any circumstances.
According to the ''Guide to the Practice of the Patent Office'' 1853,
[Evenson, A.E. ''The Telephone Patent Conspiracy of 1876'', p.66.] the primary objective of a caveat was to prevent the issuing of a rival patent for the same invention to a subsequent inventor. Before the issuing of a patent, the caveats filed within the preceding year were searched. If one was found for the same invention as the proposed patent, the Patent Office notified the holder of the caveat, who then had three months to submit a formal patent application with claims. If the two patent applications claimed the same invention, an
interference
Interference is the act of interfering, invading, or poaching. Interference may also refer to:
Communications
* Interference (communication), anything which alters, modifies, or disrupts a message
* Adjacent-channel interference, caused by extr ...
would then be declared and neither patent could be issued until it was determined which was the
first to invent
First to file (FTF) and first to invent (FTI) are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries.
There is an important difference between the strict natu ...
.
[Thomas Edison Papers: American Patent System](_blank)
Rutgers University, March 31, 2010.
Famous examples
Perhaps the most famous example of such a conflict was on 14 February 1876, when
Elisha Gray filed a patent caveat and
Alexander Graham Bell
Alexander Graham Bell (, born Alexander Bell; March 3, 1847 – August 2, 1922) was a Scottish-born inventor, scientist and engineer who is credited with patenting the first practical telephone. He also co-founded the American Telephone and Te ...
filed a patent application on the same day, both relating to the
telephone
A telephone is a telecommunications device that permits two or more users to conduct a conversation when they are too far apart to be easily heard directly. A telephone converts sound, typically and most efficiently the human voice, into e ...
. Gray ended up abandoning his patent caveat, but the case was extremely controversial and continued in the courts for many years. A deaf patent examiner (Bell was well known for his work with the deaf and had a deaf wife) had met with Bell on the matter, and a handwritten marginal note including one of Gray's critical technical innovations appeared on Bell's patent, which had not been there on the original filing.
This case contributed to the perception that patent caveats were potential leaks of valuable inventions to other applicants with friends in the Patent Office, without providing a solid legal recourse when confidentiality of the caveat was so abused. Gray did eventually win a judgement in a US court vindicating his claims, but long after: Bell was forever after known as inventor of the telephone. ''See the articles on Gray and Bell for details.''
Cost
The filing fee of $10 for a caveat was less costly than the filing fee $15 for a full patent application.
As stated by the USPTO: "In 1861, the fee for obtaining a full patent was $35, of which $15 was to be paid at the time of application and $20 when the patent was granted. In 1922, the patent filing fee increased from $15 to $20." However the patent caveat fee remained $10 per year until the caveat system was abolished.
[U.S. Patent and Trademark Office. "''The Story of the U.S. Patent and Trademark Office''". Washington, D.C., Government Printing Office. Washington:IA-SuDocs, Rev. August 1988. iv, 50p. MC 89-8590. OCLC 19213162. SL 89-95-P. S/N 003-004-00640-4. $1.75. C 21.2:P 27/3/988 , Note: the 1861 filing fees are listed on Pg. 11, and the 1922 filing fees are listed on Pg. 22.]
See also
*
Patent model
*
Patent Office 1836 fire
The 1836 U.S. Patent Office fire was the first of two major fires the U.S. Patent Office has had in its history. It occurred in Blodget's Hotel building, Washington on December 15, 1836. An initial investigation considered the possibility of ...
*
Patent Office 1877 fire
The Patent Office fire of 1877 was the second of two major fires of the U.S. Patent Office. It occurred in the 1864 Patent Office Building of Washington, D.C., on September 24, 1877. The building was constructed to be fireproof, but many ...
*
United States Defensive Publication
A United States Defensive Publication is a published patent application for which the inventor has elected not to get patent coverage. Defensive Publications were made between April 1968 and May 8, 1985. The program, called Defensive Publication ...
*
United States Statutory Invention Registration
In former United States patent law, a statutory invention registration (SIR) was a publication of an invention by the United States Patent and Trademark Office (USPTO). The publication was made at the request of the applicant (i.e. inventor(s) ...
Notes
References
*
External links
Elisha Gray's telephone caveat drawing* {{Cite Americana, wstitle=Caveat , short=x
Caveat, patent