Mr. Gold’s guide to keeping inventions secret
There once was an inventor named Gold who conceived an excellent technical solution for implementing airbags on motorcycles. After a long development process the most difficult practical problems were solved and a prototype device was ready for testing. Gold was ready to start producing the new airbags in his own factory after the test phase.
In the previous year Gold had made a serious mistake with another invention. The thought of protecting his intellectual property had not occurred to him before he noticed that his competitor was selling devices with exactly the same technical solution that he had developed. He had then belatedly tried to file a patent application for his invention, but it had been rejected on the grounds that products where the invention was visible had already been sold before the patent application was filed. The invention had thereby been made public before the filing of the patent application, so Gold was not entitled to a patent and could not prevent his competitors from utilizing his invention.
Determined not to make the same mistake with his new airbag invention, Gold had wisely commissioned a patent attorney to write a patent application before selling the product. The patent attorney had informed him that the product could be sold as soon as the application had been filed. It would take a while for the patent office to process the application, but Gold would be able to prevent others from copying the motorcycle airbag invention as soon as the patent was granted.
However, the application was not yet ready. His patent attorney had told him that it would be completed and filed on Thursday the 12th of September.
Saturday 7 September – Sunday 8 September 2019
Over the weekend, Gold installed one of his airbag prototypes on his own motorcycle before taking it out for a spin. The airbags had not yet been tested in rainy weather conditions, and he was curious to see if they would work normally. Gold loved high speeds and was caught speeding by several automatic surveillance cameras during the weekend. The airbag contraption was clearly visible in the photographs taken by these cameras.
Much later, in April 2022, when the airbag patent had already been granted, one of Gold’s main competitors in the airbag business, Mr. Black, filed an opposition against the patent. Mr. Black had somehow obtained the photographs taken by the surveillance cameras. In his opposition, he correctly noted that Gold’s new airbag product could clearly be seen in the photographs, and argued that the patent should be revoked because Gold had clearly made the invention public by driving around town on this particular weekend, before the application had been filed on the 12th of September.
However, the opposition was ultimately unsuccessful because the key technical features of the airbag system could only be seen directly from above. The Opposition Division did not consider it plausible that these key technical features could have been clearly and directly apparent to the member of the public as Gold was driving around town (see EPO Case Law:). Even a person standing on a bridge as the motorcycle drove under it could not have clearly understood the invention just by looking down. The opposition was therefore rejected.
Monday 9 September 2019
On Monday morning Gold picked up two boxes of new advertising material from PP Print Agents, a company he regularly employed for all his printing needs. This material included technical brochures with key specifics about the airbag invention. He planned to distribute them at a motorcycle fair in November.
Gold was a talkative person, and as he was riding the bus back to the office he got into a conversation with fellow-passengers about the contents of his boxes. With great enthusiasm he explained the revolutionary ideas behind his new invention. When his audience struggled to understand some of the finer details, he opened one of his boxes and gave them some of the brochures he was carrying so that they would better understand the benefits he was trying to explain. He greeted them as he stepped off the bus and did not ask for the brochures back. What remained in the boxes was more than enough for the conference.
Later, in May 2022 Ms. Green, another of Gold’s competitors in the airbag business, filed an opposition against Gold’s patent based on the advertising brochure that Ms. Green had obtained at that fair in November 2019. Green had somehow gained access to the receipts of PP Print Agents & Co and discovered that the brochures had been picked already on Monday the 9th, three days before the patent application had been filed on the 12th. She presented the brochure and argued that the patent should be revoked because Gold had printed, and probably also distributed, the brochures before the application had been filed.
But fortunately for Mr Gold, his discussions on the bus and the brochures he distributed there had not left any permanent record, at least not one that Ms. Green could discover. Furthermore, the act of printing did not in itself constitute publication. Ms. Green was unable to show that the brochures were distributed before the 12th of September. If the brochures had been printed several months before the patent application was filed, then the opposition probably would have been successful, because brochures are typically not stored for long time periods before they are distributed (see EPO Case law) But in this case the time period between the printing of the brochures and the filing of the application was so short that the opposition was rejected.
Tuesday 10 September 2019
On Tuesday, Gold gave a presentation at the annual Motor Vehicle Safety Conference, attended by hundreds of experts from around the world. He had submitted a paper to the conference with the title “Recent Developments in Airbags”. The paper focused only on research results obtained by other researchers in the past few years. Following the advice of his patent attorney, Gold had carefully avoided any discussion of his own work in this written presentation, which he knew would be published in the conference proceedings before the patent application was filed.
However, when broaching the topic of motorcycle airbags in his presentation, Gold couldn’t help expressing some criticism against a particular technical solution that another researcher had published. This aroused interest in the audience, and in a follow-up question Gold was asked to elaborate a bit more on his criticism.
Gold felt that he could hardly answer the question properly without referring to his own research, and he was too caught up in the moment to remember the warnings his patent attorney had given. So he answered the question by explaining the technical basis of his own motorcycle airbag invention and why it was far better than the device he was criticizing.
In June 2022 yet another of Gold’s numerous competitors, Mr. Gray, filed an opposition against his patent based on the oral presentation Gold had given at the conference. Mr. Gray had been present at the lecture on the 10th of September 2019 and distinctly remembered that this was the time when he had first become aware of the device Gold had developed. He therefore argued that the patent should be revoked because the invention had been orally publicized before the application was filed.
However, since Gold’s written presentation did not contain any material which would have been prejudicial to the patent, Mr. Gray had to prove what had been said when Gold replied to the question from the audience. One of Mr. Gray’s colleagues had in fact written down the main features of Gold’s answer in his notebook. Mr. Gray was unable to find anyone else who would have recorded Mr. Gold’s presentation in any form.
This proved to be crucially important for Mr. Gold, because the Opposition Division was of the opinion that, while written notes made at a lecture by at least two members of the audience could usually be regarded as sufficient evidence, the notes of just one member of the audience was inadequate. It reflected the thoughts of the listener rather than solely the content of the lecture (see EPO Case Law). The opposition was therefore rejected.
However, Gold did later encounter some difficulties due to the fact that Mr. Gray had, after hearing Gold’s presentation, filed his own patent application where Gold’s technical solution had been utilized in a slightly different manner than in Gold’s own patent application. Even though Gray’s application had been filed later than Gold’s application, Gray still obtained patent protection for his own version of Gold’s idea, because Gold’s application had not yet been not public when Gray’s application was filed. This irritated Mr. Gold greatly, and he regretted the fact that he had revealed his idea at the conference.
Wednesday 11 September 2019
After a long day at the Conference, Gold’s mind was brimming with new ideas when he got home, so he opened his computer instead of going to sleep. In the early hours of Wednesday morning he logged into motorcycleforum.com, where he noticed a lively discussion thread titled “Re: Re: Airbags are for wimps!!!”.
Gold took offense of the blatantly ignorant opinions expressed in this thread and decided to take immediate action. It took him an hour to write his response, but he was certain that it would end this silly discussion once and for all. He explained at length why his new motorcycle airbag could be installed on a motorcycle without affecting its looks at all, and the technical reasons why it would save the rider’s life in the event of a collision or fall. Over the weekend of 14th – 15th of September he corrected a few spelling errors in the long response he had written that Wednesday.
In July 2022 Ms Silver, another competitor, filed an opposition against Gold’s patent based on the message he had sent to this forum. She presented copies of the discussion carried out in the “Re: Re: Airbags are for wimps!!!” thread, and noted that Gold’s message, which presented the same idea as his patent application, had been posted on Wednesday the 11th. She therefore argued that the patent should be revoked because the invention had been orally publicized before the application was filed on the 12th.
However, the Opposition Division was of the opinion that the publication date of Gold’s message had not been proven beyond all reasonable doubt. The message contained a note which indicated that the message in question had been modified on the 14th and the 15th of September, and these dates were later than the filing date of the application. Fortunately for Mr. Gold, his message had not aroused much interest in the other members who posted to the discussion thread on the 11th, so none of them had quoted it directly or written a detailed reply. Silver could therefore not present any evidence to conclusively prove what the content of Gold’s original message posted on the 11th had been (see EPO Case Law). The opposition was therefore rejected.
Thursday 12 September 2019
On Thursday afternoon Gold received an e-mail from his patent attorney, informing him that the application had now been filed and that he could proceed with all of his selling and marketing plans without having to worry about publicizing the invention. Gold was happy to receive this news and satisfied that he had this time done things the right way.