The Patent Light

Many companies or inventors unknowingly engage in activities which essentially forfeit their right to file for a U.S. patent. Patent attorneys call these activities “statutory patent bars” because the patent statute lists several activities which will “bar” an inventor or company from obtaining a patent.

The modern patent statute goes back to 1952. Since 1952, every “barring activity” mentioned in this statute has been heavily litigated and courts have developed a fairly mature and well-defined body of case law interpreting the barring activities and exceptions to the barring activities.

When Congress passed the American Invents Act or the “AIA” which became effective in 2013, the statutory language changed. So, now we have a new list with new terms. Any lawyer will tell you that courts do not always interpret statutory language in a reasonable or predictable manner. Thus, we are now in an era where there is uncertainty regarding the meaning of the new statute because courts have not yet had an opportunity to interpret the new language.

The United States Patent and Trademark Office (“USPTO”) cannot wait on the courts and has to interpret the new AIA statute in order to issue patents. This memo attempts to explain and simplify the USPTO’s interpretation of the patent bars or patent barring activities listed in the new AIA statute. Just remember that the courts are not bound by the USPTO’s interpretation. So, we do not know if a court will agree with the USPTO.

At a risk of oversimplification, the USPTO believes the following list of activities or disclosures bars one from obtaining a patent:

(1) The invention was patented previously anywhere in the world,
(2) The invention was previously described in a document available to the public anywhere in the world;
(3) The invention was previously in public use and the use was known by the public anywhere in the world;
(4) The invention was on sale or offered for sale to the general public anywhere in the world;
(5) The invention was otherwise available to the public anywhere in the world.

However, there are exceptions to the above “disclosures.” The exceptions are:

A disclosure does not bar patentability if made 1 year or less before the effective filing date of a claimed invention where:

(A) the disclosure was made by: (1) the inventor, (2) a joint inventor or (3) by another who obtained the disclosure directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the disclosure from the inventor or a joint inventor.

The “exceptions” are designed to give the patent owner a limited one year grace period for his/her own activities.

So, if an inventor (or assignee): (1) publishes, (2) uses in a publicly known way, (3) offers to sell or sell the invention to the public, or (4) makes the invention public more than one year before filing a patent application on the invention, the inventor or assignee loses the ability to file for a patent on the invention.

In this situation the “public” means anyone who does not have an obligation of confidentiality. Thus, if the inventor discloses the invention to a small group of potential investors and the investors have no duty of confidentiality, the inventor has made the invention “public” or a public disclosure.

Although the U.S. provides for a limited grace period, keep in mind that most other countries do not have a grace period. Thus, while the public disclosure in the above example may have started a one year grace period for a U.S. patent filing, the public disclosure destroyed the inventor’s ability to file in Europe and other regions who does not have a grace period. If foreign filing is important, you should forget about the U.S. grace period.

Additionally, the inventor or assignee will be prevented from obtaining a patent if a third party (who has independently invented the invention or a similar invention) files for a patent before the inventor or assignee files for their patent. In other words, the first person to file an application is entitled to receive the patent. This is another major change of the AIA. Previously, the first person to invent was entitled to receive the patent.  So, under the regime of the AIA, it is even more important to file early and often to prevent others from racing to the patent office.

For more information contact Bill Naifeh at www.naifeh.com.