Don’t Lose Your Patent Rights

Avoid Loss of US Patent Rights

In the U.S., you must file a patent application within one year of when you: (1) disclosed your invention publicly (2) used your invention publicly, or (3) offered for sale, a product or service that utilizes your invention. Ignore this rule to and you may find yourself forfeiting your ability to get a patent!

Public Use and Public Disclosure

The public use can be hidden use. Here are a few examples:

• An invention is contained within a new circuit or written into firmware within a mobile device. Using the mobile device in public, is considered public use even though the invention is hidden from public view.
• A new type of solar panel is being manufactured in a factory or tested in an engineering lab. Unless access is restricted to either the factory or the lab, either use would be considered public use.

Offer for Sale

Under the old law, the one year rule could be triggered by an offer for sale, either public or confidential. Under the new law, this is unclear and hasn’t been tested in the courts. The U.S. Patent and Trademark Office is currently interpreting the law to mean that the sale must be public (i.e. not confidential) for the one year rule to apply.

This is an offer for sale of a project containing the invention. It is not an offer for sale of the invention itself.

Avoid Loss of Foreign Patent Rights

In most foreign countries, including the European Union, public disclosure of your invention before you file a patent application will result in you not being able to get a patent. Canadian being a notable exception. Canada has a one year grace period similar to the U.S.

In addition, if you wish to obtain foreign patents, you must:

• either file your foreign patent applications within a year of filing your U.S. patent application or provisional application; or
• file a PCT application within one year of filing your U.S. patent application or provisional application. A PCT application can give you eighteen additional months to file your foreign applications.

Take Aways:

1. If you have any inkling that you may want to file a patent application in a foreign country, other than Canada, you need to file either your U.S. or PCT (international) patent application BEFORE you publicly disclose your invention.
2. File your foreign or alternatively your PCT application within one year of filing your U.S. patent application.

Best Practice: File Before Pubic Disclosure

You have a lot to be concerned about with your business without worrying subtleties of U.S. patent law. Recent changes in the patent law implemented on March 16, 2013 are untested in the courts. Because of this, I believe it prudent to follow both a simple and careful approach: file your U.S. Patent Application Before Public Disclosure.

Let me elaborate:

• Do not disclose your inventive concept publically (i.e. without a written or implied non-disclosure agreement) before you file your patent application.
• Do not offer a product for sale that uses your inventive concept publically, confidentially or otherwise before filing a patent application.

• Do not distribute any literature that includes your inventive concept before you file a patent
• In the United States, public disclosure includes hidden use. For example, public use of software code, firmware on a chip, a mechanical device hidden inside a box.

When I say file your U.S. patent application before public disclosure, this can be a provisional or non-provisional (i.e. normal) patent application. For reasons that I explain in the provisional patent applications article, I strongly advise against filing provisional applications.

Notes: 

In U.S. law,  35 U.S.C. §102(b)(1)  describes how an inventor has up to one year to file a patent application after disclosing it publicly.

The Manual of Patent Examining Procedure (MPEP) in section 2133.03 describes the U.S. Patent and Trademark Office’s current position regarding public vs. private offers for sale.