How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers

12.1 DISTINCTIVE FEATURES OF U.S. PATENT LAW

While the United States' switch to a first-inventor-to-file system has helped to harmonize U.S. patent law with the patent laws of most other countries, U.S. patent law has several distinctive features that are not shared by many other nations, including the best mode requirement, the one-year rule, and the continuation-in-part application. (These matters are discussed in Section 5.4.2.1 and 6.5, respectively.) While U.S. patent law requires inventors to disclose the best mode they have found for making their invention in a U.S. patent application, many other nations do not have this requirement. For example, European patent law requires inventors to disclose at least one mode of making or using an invention, but this mode need not be the best mode the inventor has found.

In U.S. patent law, the one-year rule allows an inventor to file a patent application on an invention he disclosed for up to one year after the disclosure (see Section 5.4.2.1). Patent law in many foreign countries, particularly European nations, is far less forgiving of early disclosures by an inventor. For example, under European Patent Office rules, an invention must be novel on the date it is filed based on all public disclosures, unless the discloser has signed a non-disclosure agreement with the inventor. Thus, an early disclosure by an inventor in a presentation or journal article destroys patentability in Europe. Similarly to the United States, Canada and Mexico ...