file within the statutory time limit results in loss of right to a patent. In some foreign countries, loss of right follows immediately after various "public" acts, such as publication or sale. Case law has defined certain instances in which the time limits are not applicable-such as when a "use" is experimental or a "publication" is limited in nature. However, a prudent general practitioner might best serve the interests of his or her client by suggesting that the client find out if his potential right to a patent-in this country or abroad-may be in jeopardy due to any apparently public act.
t'
As in other areas of law which permit pro se representation, the inventor filing for a patent can represent himself before the Patent Office. However, before doing so, the inventor should be aware of several points. First, as noted by the Supreme Court in Topliff v. Topliff, 145 U.S. 156, 171 (1892), the patent application "constitute[s) one of the most difficult legal instruments to draw with accuracy." And, second, certain defects in a patent applicationsuch as not adequately describing the invention-may, in effect, vitiate the filing. If the inventor begins to promote his invention after filing his application, it is likely that the Patent Office will not inform him of any such fatal defect in the application until long after one year has expired from the date of his first public promotion. By this lime, the inventor may have lost his right to a patent. The resourceful, self-reliant inventor would be well-advised to have his pro se patent application reviewed by a patent practitioner before it is filed. Finally, a client indicating that he intends to retain an invention broker or invention developer should be cautioned. The Federal Trade Commission (FTC)-as well as certain individual states-have successfully attacked various organizations on fraud grounds. In particular, companies requiring a substantial upfront payment should be evaluated with special scrutiny." V. Conclusion The general practitioner may encounter a patent-related matter in any of various contexts. The attorney familiar with certain basic facts concerning patents and patent law should be in a better position to understand his or her client's patent-related problems and to provide assistance in resolving them.
t-
FOOTNOTES 1. The present article discusses some aspects of palents and patent law which may be of interest to attorneys who normally practice in other fields and is, it is noted, not intended as a primer on patents, patent law or inventor's rights. These subjects are well treated by various authors as well as the Patent Office: How to Protect and Benefit from Your Inventions. American Patent Law Association, Suite 203, 2001 Jefferson Davis Highway, Arlington, Virginia 22202; Guide to Patents-Employed Engineers: Who Owns Their Inventions? Prepared by Howard Rose on behalf at the Task Force on Patents, U.S. Activities Board of the IEEE. IEEE Catalog No. UHO 147·9. For information regarding various available pamphlets. write to: Commissioner of Patent and Trademarks, Washington. DC 20231. 2. 5 U.S.C. 552 3. The language of 11 U.S.C. 1 365(e), 154 (c) suggests that Ipso facto bankruptcy clauses in patent assignments or licenseswhereby a license terminates or rights revert automatically upon bankruptcy of the transferee-are ineffective. Note that the Bank· ruplcy Reform Act of 1978 strictly limits the steps a tranferor may take in protecting his interests against an insolvent transferee. 4. Walker Process Equipment Company v. Food Machinery Corporation, 382 U.S. 172 (1965) 5. 16 Am Jur. Proof of Facts 9, 143 6. ABA Code of Professional Responsibility, DR 6-101 (A) (1) 7. ABA Code of Professional Responsibility, DR 2·107 (A)
9. Catanzaro v. Masco Corporation, 432 F.Supp. 415 (D.C. Del. 1976), affirmed 575 F.2d 1085 (3rd Cire., 1978), eert. denied. 10. 35 U.S.C. 1261 11 . To be valid against a subsequent purchaser or mortgagee for a valuable consideration, without notice, an assignment, grant, or conveyance must be recorded in the U.S. Patent and Trademark Office. 12. U.S. Constitution, Article I, SecHon 8, Clause
8 13. See Sperry v. State of Florida. 378 U.S.
14.
15.
16. 17. 18. 19. 20. 21. 22. 23.
24.
8. 35 U.S.C. 1154
379 (1963), wherein the Court held that a state could not enjoin a non-lawyer from practicing before the Patent Office when ra-grstered by the Patent Office even though such activity represented the "practice of law" within the state. See also Sears Roebuck & Co. v. Stiffel, 376 U.S. 225 (1964), and Compeo Corporation v. DayBrite Lighting Company, 376 U.S. 234 (1965). See Genl-Chlor International, Inc. v. Multisonics Development Corporation, 580 F.2d 981 (9th Cire., 1978). 35 U.S.C. 1122 See Moore's Federal Practice, 1981 Rules Pamphlet, Federal Rules of Civil Procedure, Part 1, page 224. 5 U.S.C. 1552 (b) (4) 35 U.S.C. 1271 19 U.S.C. 11337 (Tariff Act 1337); 19 U.S.C. 1337a 35 U.S.C. 1283 35 U.S.C. 1284 Manual of Patent Examining Procedures, 11706 35 U.S.C. 1102 (b) As of 1976, one invention developer had generated a profit for 3 of 30,000 inventors. See In re Raymond Lee Organization, FTC Docket No. 9045 (July 8, 1977).
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January 19S4/Arkansas Lawyer/27