Wednesday, March 08, 2006

Cortina on L-3 Communications Security and Detection Systems Corporation v. American Science & Engineering

Jose Cortina discusses L-3 Communications Security and Detection Systems Corporation v. American Science & Engineering:

The issue is whether the patent filed by American Science & Engineering (the defendant) should be invalidated because it was not filed within the time limits allowed by law.

The relevant facts in the case are that the defendant submitted a proposal to the government to “develop” a device through government funding. At the time the proposal or offer was made, the court concluded, the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to allow the invention to be patented, or in legal terms “to enable a person skilled in the art to practice the invention.” [IPBiz: one recalls the role of drawings in Pfaff v. Wells Electronics.]

The court compared the details of the proposal submitted to the government with the patent, and found that there was nothing in the proposal language or design revisions which appears to have influenced the defendant’s articulation of the claims (the part of the patent that defines the invention) challenged in the case.

The danger, and it is a danger that existed prior to the court decision in the L-3 case, is to those who enter into a purported “development contract” relating to a “development” which has already been created, on paper or otherwise, to the level that the development can be built or patented. In such a case, the party offering the development needs to make sure that a patent application is filed before one year expires from the date the offer is made.

For those in “true” development contracts, they merely need to track the date the development is sufficiently completed and offered for sale, or disclosed publicly, such that a device can be delivered or patent application filed, so that an application is filed before the end of one year after that date.

[IPBiz note: in a different area, one wonders how the patent applications of Hwang and Schatten in the area embryonic stem cells, which perhaps are not enabled, will impact on those later on the scene, who attempt to develop the non-enabled ideas.]


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