The laws governing the three types of patent applications, utility, design and plant, can be found under the Patent Act 35 U.S Code. The guidelines and specifications for each type of patent invention and the timelines have been specified under these laws to ensure the protection of the patentees and their inventions.
To obtain patent protection, you must file a patent application with USPTO to prevent it from being sold or used by others. The examiners evaluate your application, reviewing the patent to determine its patentability, after which you are granted patent rights for a time period of 20 years from the date of filing.
Why is it Important to File a Patent Application?
If you are planning on selling your invention, have an offer of sale, or intend to make it public through print or use, the patent application must be filed within one year of the planned date. If the patent application is not filed within the year, the Court can deny patent protection for your invention. Filing an application before selling or making it public allows patentees to explore market opportunities and streamline the invention, determining its feasibility before the invention can be launched formally. This also provides patent protection, giving the patentees the freedom to conduct their research and experiments without worrying about their patent invention being stolen or copied.
Patent applications ensure your patent rights are protected before your invention is made public, providing patentees with the leverage to perfect it before disclosing it to the public.
The following case details illustrate the importance of filling a patent application before the sale or an offer of sale, and how it affects patent protection rights in utility patent inventions.
RCA Corp. v. Data General Corp.
RCA accused Data General of wilful infringement of its patents regarding a government project display system for computers. The defendant argued that the bid documents for sale were submitted before the patent application was filed. Since the bid documents were taken as an offer for sale and the patent application was filed one year after the documents, the patent claim was rendered invalid.
RCA argued that the bid documents could not be constituted as an offer of sale because they did not include the full specifications of the invention. The Court diagreed, stating that even though the bid did not disclose all aspects of the invention, it still cannot prove if it was an offer of sale or not. This could only be ascertained by evidence outside of the bid documents, such as drawings, communications and witness testimony. During the trial, an RCA witness testified that the RCA intended to include the invention into the device if the bid was accepted by the government. Thus affirming that the bid documents could be constituted as a sale offer.
Another point to note is that the RCA witness confirmed that they had finished testing the prototype invention and had produced a working version of the invention. This fact also excluded RCA from the “on-sale”, which states that the offer for sale date does not come into effect if the inventor is still experimenting with the invention. Only after testing has been concluded, does the sell offer become valid with the one-year patent rule.
Conclusion
The above case shows how a sale offer or a quote on products, software and services can trigger the one-year time period for patent applications. This date is non-negotiable and without any extensions or petitions. Therefore, businesses should be aware of the repercussions of not filing timely patent applications during the testing stage to avoid losing patent claims. This could lead to losing patent rights and massive monetary losses.