Patent Bar Deadlines - If You Snooze, You Lose!

Inventive minds throughout the world typically know that patent protection is available for new and useful inventions. Unfortunately, these inventive minds are often unaware that careless mistakes can prevent them from obtaining a patent for their invention. In particular, many countries have a requirement that any public disclosure of an invention before filing a patent application for the invention bars the inventor from obtaining a patent for the invention in that country. This is often referred to as an "absolute novelty" requirement. In other words, an invention must be completely new to the general public at the time a patent application is filed, or the invention will not be considered "novel" for the purposes of obtaining a patent. However, even when an inventor is barred from obtaining patent protection in one country operating under an absolute novelty requirement, patent protection may still be available in other countries that have more lenient patent laws, such as the United States.

The One-Year U.S. Grace Period

The United States, and certain other countries, offer grace periods to inventors following a public disclosure of an invention. During these grace periods, inventors may still file for patent protection even though the invention has already been publicly disclosed. For example, Title 35 of the United States Code, Section 102 states that patent protection is not available if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States". Accordingly, unlike those countries that operate under an "absolute novelty" requirement, the United States offers a one year "grace period" for inventors to file a patent application following a public disclosure of the invention.

Because of the one year grace period offered in the United States, inventors who are barred from obtaining patent protection in other countries, may still be entitled to patent protection in the United States. For example, consider an inventor who has yet to file a patent application for his invention in any country, but who first publicly disclosed his invention nine months ago by publishing a paper in Germany that described the invention. If the inventor wishes to file a patent application for the invention in Germany, the patent application will be denied because Germany operates under an absolute novelty requirement, and the novelty of the invention was generally destroyed in Germany when the paper was published nine months ago. However, novelty has not been destroyed in the United States because of the one year grace period. If the inventor wishes to file a patent application for the invention in the United States, publication of the invention nine months earlier will not block patent protection for the invention, and a patent may still be granted.

Novelty-Destroying Acts

Acts of invention disclosure that will destroy the novelty of an invention and bar an inventor from obtaining patent protection also vary from one country to the next. In some countries, any public disclosure, whether written, oral, or a simple public use of the invention anywhere in the world counts as a prior act that will destroy the novelty of the invention. In the United States, the invention must have been "patented or described in a printed publication" anywhere in the world, or "in public use or on sale" in the United States in order for the disclosure to start the running of the one-year grace period. For example, publication of an invention in Canada starts the clock for the one year grace period in the United States. However, mere public use of the invention in Canada (e.g., at a trade show in Canada) more than one year before filing of the application for patent in the United States may not destroy the novelty of the invention in the United States, provided there have been no other public disclosures of the invention. Determining what is and what is not a public disclosure of an invention should be left to a patent attorney.

What if an inventor wishes to discuss his or her invention with a third party before a patent application is filed for the invention? This question often arises when the inventor has not completely finalized or reduced the invention to practice, but the inventor believes the time is right to propose a business relationship concerning the invention to a third party. In these situations, disclosure of the invention to the third party is typically acceptable, provided the inventor has a non-disclosure/confidentiality agreement with the third party and the invention is not offered for sale when it is disclosed. A non-disclosure/confidentiality agreement with a third party will usually prevent the disclosure from being considered a "public disclosure" and preserve the novelty of the invention. However, it is recommended that the non-disclosure/confidentiality agreement be reviewed by a patent attorney along with any conditions related to the disclosure to ensure that the absolute novelty of the invention is preserved.

File Early

Even if an inventor has not made a public disclosure of an invention, and does not plan to make a public disclosure in the near future, many reasons remain for filing a patent application as soon as possible. Many countries operate under a "first to file" system. In these countries, the first party to file a patent application for an invention is the party that will be awarded a patent. In these countries, the second or later party to file a patent application will be denied patent protection even if he or she was the first to invent. Other countries, such as the United States, operate on a "first to invent" system. In these countries, the party that can prove they were the first to invent is the party entitled to patent protection. However, the filing date of the application is clear evidence that the invention was conceived and reduced to practice at least as early as the filing date, and the later party must produce evidence of an invention date that clearly pre-dates the first party's filing date. Furthermore, even in countries with a grace period, any delay in filing a patent application provides additional time for the public disclosure of a related act that could block patent protection for the invention. For example, if a first inventor is unaware that a subsequent inventor has already made a public disclosure of the invention, a delay in filing past the one year grace period could result in a loss of patent rights. Therefore, inventors in all countries are encouraged to file patent applications as soon as possible following conception of an invention.

Conclusion

As discussed above, patent laws can be full of pitfalls for the unsuspecting inventor. Inventors should be warned to seek the advice of a registered patent attorney as soon as an invention is conceived. Inventors must be informed that public disclosures of inventions can result in the complete loss of patent rights. Furthermore, even if an inventor has already made a public disclosure of his or her invention, and has lost patent rights in some countries, patent protection may still be available in other countries. Therefore, all inventors should be counseled to immediately seek the advice of a patent attorney once it is determined that an invention exists. An inventor that does not take immediate action to protect his or her rights may indeed lose the ability to obtain a patent.

For further information, please contact Jay Taylor.