Back in law school, I wrote an article contemplating the implications of young employees posting to Snapchat images of proprietary designs prior to those designs being patented. Today, I will address that issue from the prospective of defense counsel seeking to challenge the validity of such a patent in an infringement litigation.
As a disclaimer, it is important to note that I am not licensed to practice before the United States Patent and Trademark Office, and as such cannot speak to the implications of anything contained herein on patent prosecution, either in pre or post grant proceedings. Rather, the contents of this article are relevant only with particular regard to an invalidity defense in the context of a suit for patent infringement. For advice on the implications of this or anything else on patent prosecution, contact a licensed patent attorney.
For those who don’t know, Snapchat is a social media platform whereby users communicate with one another via transmitting photographs and video set to “disappear” after a finite time period. Messages can either be privately exchanged between two individuals, or more public, up to and including publicly accessible.
For any of what follows to make sense, we need to do a quick high-level rundown of patent law. Patent protection is governed by Title 35 if the United States Code, of which §§ 101, 102, 103, and 112 are, generally, most impactful upon patentability. 35 U.S.C. § 101 dictates patentable subject matter; 35 U.S.C. § 102 proscribes “novelty” as a condition for patentability; 35 U.S.C. § 103 proscribes “non-obviousness” as a condition for patentability; and 35 U.S.C. § 112 proscribes the form of patent prosecution documents.
Patent infringement is a Federal cause of action governed by 35 U.S.C. §§ 271, et seq. Almost always, when an action for patent infringement is commenced, the defendant accused of having infringed will contest the validity of the patent(s) alleged to have been infringed. Pragmatically speaking, this is because invalidity is, in essence, a complete defense to infringement. To over-simplify for the sake of clarity, you cannot infringe a patent that is not a valid patent.
35 U.S.C. § 102(a)(1) provides that an inventor shall not be entitled to a patent for an invention that has been in public use prior to the time of filing. There are exceptions to this generality, particularly where (35 U.S.C. § 102(b)) the inventor himself or his joint inventor committed the public disclosure, which disclosure was made one year or less prior to the effective filing date. For the sake of simplicity, we will assume that none of these exceptions apply.
How does any of this relate to Snapchat? When I initially began the thought process behind this article, I was a young law student who had freshly obtained a degree in engineering. While I was camped out in the library with my nose crammed in law textbooks, many of my engineering friends were off working on exciting new technology, which they would document on Snapchat. Between the jealousy I felt and the amount of studying I had been doing, I could think only one thing: “Is that a public disclosure?”
Since that time, I have mulled the issue over quite a bit, and discussed it with much more experienced attorneys than myself. In so-doing, I have arrived at this conclusion: it very well may be.
You will notice that the answer is neither definitively “yes” nor definitively “no.” As is so often the case in law, it depends heavily on the facts of each particular case. For portrayal on Snapchat to invalidate a patent, it would have to be substantially more than a three-second photograph you sent to your mother with a new technology barely visible in the background. Such an instance would not be “public use” within the scope of § 102(a). However, a large publicly traded company that mistakenly transmitted a fifteen-minute video of an engineer thoroughly explaining a new technology for the public to view, and which then failed to notice its mistake for several weeks, may very well be invalid pursuant to § 102(a). Between those two extremes is an area of grey depending heavily on the specific facts of the disclosure.
The moral of the story? Put your phone away at work. It probably won’t amount to anything, but if it does, it could be bad. Better safe than sorry.
Life’s not always fair, but it may be fairer than you think it is. If you’re in a bind, The Law Office of Christopher J. Mutchler may be able to help.
Copyright Christopher Mutchler