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Don’t Lose Those Patent Rights

Added by Hawley Troxell in Articles & Publications, Business Law on October 30, 2015

If you’re thinking of patenting your invention, you need to ensure that your invention is new. Protecting your invention’s “newness” could be more complicated than you may imagine.

A patent gives its owner the right to exclude another from using, making, selling, or importing the patented invention. Although an inventor may obtain a patent on nearly “anything under the sun that is made by man,” a patent may only be obtained on an invention that is new, useful, and nonobvious.

An invention is “new” unless it “was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or it “was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

  1. Printed Publication

If the invention is described in a printed publication, the invention is subject to the “printed publication” bar. A printed publication is not limited to journal articles and white papers. Printed publications include web sites, films, slide shows, and a myriad of other mediums. Importantly, the printed publication need not be widely disseminated or easily accessible, but merely “findable.”

  1. Public Use

To avoid a “public use” bar, the invention may not be used in front of anyone other than the inventor or an individual who is under a duty of secrecy to the inventor. Simply put, a “public use” is a non-secret use of the invention. Importantly, whether an invention is in public use is not dependent on whether the invention is visible to the public-an invention may be in public use even if the use is not outwardly visible to the public. Some inventions can be used when they cannot be seen or observed by the public eye. For example, in one foundational patent case, the Supreme Court determined that a use of corset stays by one woman was a public use even though the stays were contained within the corset and never outwardly visible to the public. Importantly, experimental uses do not trigger a public use bar.

  1. On-sale

Historically, an invention is subject to an “on-sale” bar if, it is 1) sold, or the subject of an offer to sell, and 2) “ready for patenting.” An invention is likely “ready for patenting” when it is “substantially complete.” In contrast, an offer to sell an invention concept rather than a “substantially complete invention” will not trigger the on-sale bar. Even a single offer to sell is sufficient to trigger the “on-sale” bar.

Importantly, a “grace period” provides that a patent application may be filed up to one year after certain disclosures. Specifically, a patent application may be filed up to one year after a disclosure made directly or indirectly by an inventor. A patent application may also be filed up to one year after a disclosure made by a third-party, provided that an inventor directly or indirectly disclosed the subject matter prior to the third-party disclosure and so long as the application is filed within one year of the inventor disclosure.

Furthermore, a disclosure appearing in an application or a patent does not destroy the “newness” of a claimed invention (1) if the disclosed subject matter was obtained directly or indirectly from an inventor; (2) if before the application or patent was filed, the disclosed subject mater had been publicly disclosed by an inventor, whether directly or indirectly; or (3) if the disclosed subject matter and the claimed invention were owned by the same person not later than the effective filing date of the claimed invention.

In conclusion, to ensure that your invention is “new,” you must avoid unintentional public disclosures. If a disclosure occurs that falls within the grace period exceptions, ensure that you file an application in the United States within one year of the disclosure. Although this one-year time limit may seem severe, most jurisdictions outside of the United States are “absolute novelty” jurisdictions, which treat certain disclosures as immediate bars to patentability, offering no grace period at all. Said another way, outside of the United States, any public disclosure may result in an irrevocable loss of patent rights. With careful planning, however an unintentional loss of patent rights can be avoided.