One of the first questions a patent attorney/agent should ask an inventor during the initial inventor interview is whether the invention was disclosed/used/sold ANYWHERE outside of the inventor’s organization. This inquiry is critical as 35 U.S.C. 102(b) bars patentability of an invention if various conditions are present. More specifically, further to the aforementioned law, patentability will be barred in the United States if MORE THAN ONE-YEAR PRIOR TO filing in the United States, 1) the invention was patented or described in a printed publication ANYWHERE in the world; 2) the invention was in PUBLIC USE in the United States; OR the invention was ON SALE in the United States.

A simple shortcut for remembering the various 102(b) statutory bars is: the publication or patenting of an invention can occur anywhere, while the use or sale is limited to this country (the United States), MORE THAN one year before the U.S. filing. Additionally, although the statutory bars are absolute, there is a limited experimental-use exception (which requires its own post) which if applicable, may not bar patentability.

Furthermore, in addition to the aforementioned inquiry, the attorney/agent should ask the inventor whether any web pages, handouts, presentations, web pages, brochures, etc. were ever generated for the invention (even a single copy or a single public use). Its important to ask whether any of the aforementioned items were generated as the Inventor may not realize that a disclosure even occurred until asked about specific items. If any of the aforementioned items were indeed generated and disclosed to the public, patentability may be lost if a year has elapsed since the disclosure to the public. However, if a disclosure has occurred, and a year has not elapsed, the practitioner should immediately inform the inventor (or organization that will likely be assigned the patent) that patentability will be lost unless the application is filed within the one-year grace period.

Although these statutory bars may seem harsh, in comparison to most other foreign countries, the United States has one of the most liberal grace periods (of one-year). In fact, many foreign countries do not provide any sort of grace period prior to filing; therefore, any sort of disclosure of an invention prior to filing may bar patentability in such countries. However, as most foreign countries allow an Applicant to file a patent application therein within one year of filing in another country, the Applicant may want to firstly file the application in the United States (and than file within the foreign country within a year) if foreign protection will likely be sought. However, notwithstanding the foregoing, if foreign protection will be sought, a proper investigation should be conducted for each particular foreign country (as patent protection is regional) prior to any public disclosure.

Overall, it is nearly always preferable to firstly file a patent application prior to any disclosure, public use or offer for sale. However, as the “real world” does not always for such a setting, it is highly advisable that the practitioner advise their client appropriately of the consequences that may result in view of the aforementioned statutory bars. For further details regarding “public use” and “on sale” activities in the United States, the reader is invited to review MPEP 2133.03.


Joseph Iskra*
Patent Attorney
http://iskraip.com
*Limits practice to Federal Courts and Agencies.