HOW TO SAVE YOUR PATENT RIGHTS BY UNDERSTANDING STATUTORY BARS
“Can I get a patent?”
The first question I often get from inventors who are new to the patent application process is something along the lines of “can I get a patent?” It is an easy question with a complicated answer.
Sometimes the Patent Office decides
Much of the time, whether an invention is patent eligible depends on the patent office’s interpretation of the invention and the prior art, and whether the invention has been invented before by someone else (anticipated by prior art) or whether it was obvious to combine other existing inventions to create the new invention. These rejections relate to the actions of other inventors, what they invented, when they did it, and how the patent office chooses to view those actions.
Sometimes, it’s up to the Inventor
Other rejections, however, are completely within the control of the inventor. Statutory bars are hard-and-fast rules that are written into the patent law. If they are broken, an invention is no longer eligible for patent.
Statutory bars relate to actions that the inventor himself takes and are therefore under his control.
Inventors must patent or get off the pot
Statutory bars exist for the sole purpose of limiting the amount of time that an inventor has to claim a patent on their invention after they have made it public. As long as the invention remains secret, statutory bars are never at issue. Generally, once an invention has been made public, an inventor has exactly one year to file a patent application. Inventors have a grace period of one year after publishing, publicly using, or selling the invention. If you have disclosed your invention to anyone, it is important to consult a lawyer immediately because timing is so critical to the patent process.
I implore inventors to contact a patent attorney as soon as they begin developing an invention because a tiny investment of time can save tremendous difficulty, complication, and heartache later in the patenting process.
But why?
The underlying public policy is that the patent system exists to induce people to invent. Congress will grant an inventor a monopoly for a limited period of 20 years over the rights to make, use, sell, offer to sell, or import an invention in exchange for sharing the invention with the public. A patent is a document that discloses everything one would need to make and use that invention once that period is over. The statutory bars prevent inventors from artificially lengthening the term of their patent, encourage earlier disclosure to the public, and prevent inventions from being removed from the public domain.
The one-year grace period after disclosure exists for a few reasons. It gives inventors an opportunity to determine whether pursuing a patent is worth the time and effort, it allows time for inventors to prepare an application, and it allows the inventor to disclose a little earlier, in other non-patent publications, than they would if the grace period did not exist.
What counts as a public disclosure?
The publication bar extends to any publication, worldwide. This includes journal articles, patents in other countries, fliers handed out at trade shows, printed pictures, or any other literature that describes the invention. The publication is required to be “sufficiently accessible” to the public, but accessibility is rarely at issue since even a single copy of a doctoral thesis, properly catalogued in a university library, has been considered to be publicly accessible.
The on-sale bar triggers the beginning of the grace period if an invention is actually sold or merely offered for sale, but only if the act occurs in the U.S. The primary issue that arises with the on-sale bar relates to whether an inventor has offered to sell the actual invention, or whether he has merely offered an unrealized “concept.” This distinction depends on the stage of development of the technology.
What should I do?
The public use bar, like the on-sale bar, relates to actions that occur only in the U.S. This relates to the release of control over the invention to the public. If any person other than the inventor witnesses the use, or is able to use the invention themselves (even if such use is in a private setting), the beginning of grace period is triggered.
Like most laws, there are nuances and exceptions to these rules. It is possible to demonstrate an invention without triggering the bar if proper precautions are taken. Most commonly, if an inventor demonstrates their invention to another, but that person has signed a Non-Disclosure Agreement, then that is not considered a public disclosure.
Therefore, the invention would not have entered the public domain, and the public use grace period would not be triggered. This is the reason that NDAs are so commonly executed during the development of an invention. I am of the opinion that NDAs can be retroactively effective for this particular purpose as well, though this is unsettled law.
Another exception is “experimental use”. If you must publicly use your invention for the purpose of “reduction to practice,” then you may avoid triggering the statutory bar. All of these circumstances need to be considered by a patent attorney as one of the preliminary step in the patenting process.
Because there are so many ways that an inventor can lose his patent eligibility, it is important to consult a lawyer early in the development process. Many patent lawyers offer free initial consults in which they can advise inventors on how to avoid triggering the bars. The timing of patent application, provisional patent application, product development or experimentation, placing a product on sale, or protecting privacy through NDAs can all be critical to protecting an invention’s value.
Inventors should contact a lawyer early. My clients are never sorry that they did.
