This article explains when a patent application needs to be filed.

1. Summary

In the U.S., generally, there is a one year grace period from the first of:

- Invention is publicly disclosed

or

- Invention is sold or offered for sale

and when a patent application should be filed.

This grace period can be extended for experimental use when public experimentation is required. The rules around public experimentation are complex.

The rest of the world may not have this one year grace period.

2. On Sale and Available to the Public

One of the requirements to obtain a patent is that the invention is new (legal word novel) but U.S. law gives a one year exception for the inventor’s work or work derived from the inventors. One of the public policies behind these laws is to keep inventions that are in the public domain from being withdrawn from the public domain with a patent.

The most common error we see inventors make is where the inventors either put their invention on sale or make the invention publicly available more than one year before filing a patent application. Think of when the invention is offered for sale, sold, or made available to the public as starting a one year countdown clock in which the patent application should be filed before the clock runs out of time.

It is relatively easy to determine when an invention is on sale. Normally, the inventor offers to sell a product with their invention or the inventor discusses with a third party an offer for the product. If the invention is owned by a company, generally think of replacing the inventor(s) with a company representative. The sale limitation is often called an "on sale bar" since a sale more than one year before filing a patent application could bar a patent from being obtained for the invention(s) that were on sale. In other words, a patent may not be obtained if the invention was sold more than one year before filing a patent application.

The U.S. Patent and Trademark Office (USPTO) has created a document called Manual of Patent Examining Procedure (MPEP) to provide guidelines for examining patent applications. The MPEP includes patent laws, how the USPTO interprets decisions made by courts, and other USPTO examining procedures.

MPEP 2152.02(d) On Sale uses the following two factors (legal word prongs) to determine if the invention is offered for sale:

(1) the subject of a commercial sale or offer for sale, not primarily for experimental purposes;

and

(2) ready for patenting.

See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1646-47 (1998)

Determining "ready for patenting" requires a detailed legal analysis. See MPEP 2133.03(c)(I) for a detailed discussion. A simplified explanation of "ready for patenting" could be if the invention is to the point where when the inventor gives a description of the invention to someone skilled in the field of the invention, this person could recreate the invention (the legal phrase is teach a person of skill in the art to make and use). For example, if someone has an idea to create a robotic dog walker but has not started the research and development efforts of the robotic dog walker yet, asking someone if they would pay $1,000 for a robotic dog walker would most likely not be on sale since the invention was just a high level idea that is not ready to be patented. On the other hand, if the robot dog walker was ready to begin mass production, any inventions within the robot dog walker would most likely be ready for patenting.

A recent court case about "on sale" determined a secret sale is on sale. See Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628, 129 USPQ2d at 1193 (2019).

Available to the public is determined based on the specific facts of a case. Generally, public use is when the inventor lets someone observe the invention in operation or use the invention that is not under their control or does not have an obligation to keep the invention a secret. Just because someone has an obligation to keep the invention secret does not mean it is not a public use but it does weigh in favor of not being a public use. Similar to the on sale bar, available to the public must be ready for patenting.

The Invitrogen court found:

the test for the public use prong includes the consideration of evidence relevant to experimentation, as well as, inter alia, the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed on members of the public who observed the use; and commercial exploitation. See Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005)

Regarding public use, See MPEP 2152.02(c) states:

an inventor creates a public use bar... when the inventor shows the invention to, or allows it to be used by, another person who is "under no limitation, restriction, or obligation of confidentiality" to the inventor. See American Seating, 514 F.3d at 1267, 85 USPQ2d at 1685

Experimentation may be used to counter the public use and on sale bar when experimentation is required. Experimentation does not include market testing. In other words, experimentation does not include attempting to sell the invention. As the experimentation analysis is complex, we recommend consulting with a patent practitioner (i.e., a patent attorney or patent agent).

Regarding experimental use, MPEP 2133.03(e) states:

Experimentation must be the primary purpose and any commercial exploitation must be incidental in order for the sale to be a permitted activity that does not create a bar under pre-AIA 35 U.S.C. 102(b) market testing

An example of experimental use is where an asphalt road needed to be tested in public. See ELIZABETH v. AMERICAN NICHOLSON PAVEMENT CO., 131 U.S. 148 (U.S. Nov. 25, 1878)

3. Other Disclosures

Other disclosures that could bar patentability include:

- Patented

- Printed publication

- Otherwise available to the public

The printed publication must be enabling. In other words, the printed publication must have enough details to recreate the invention.

Otherwise available to the public covers different forms of media, such as YouTube videos.

Our experience is that these other forms of disclosure tend not to harm the patent rights compared to public use or on sale since inventors tend to naturally want to keep these aspects out of the public domain.

4. Discussion of 35 U.S.C. 102

The law that requires an invention to be new is 35 U.S. Code 102. The relevant sections are:

Conditions for patentability; novelty
(a)Novelty; Prior Art.—A person shall be entitled to a patent unless—
(1)the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;
…
(b)Exceptions.—
(1)Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A)the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed 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 subject matter disclosed directly or indirectly from the inventor or a joint inventor.

There is a debate among legal scholars if on sale and public use are covered by the exception. The debate is if "disclosure" includes on sale and public use.

The USPTO has taken the position that "disclosure" includes on sale and public use. A challenge is that a court is not bound by the USPTO's position. A court could decide that "disclosure" does not include on sale and public use.

An important aspect is that on sale and public use one year before filing a patent application generally will not stop a patent from issuing from the USPTO under the current USPTO policy but there is a risk that a court could determine a patent is invalid because of the on sale or public use before the patent application was filed.

5. Outside the U.S.

The rest of the world may not have the one year grace period like the U.S. does. See WIPO Grace Period for a brief description of the grace period for various countries.

6. This Article is an Oversimplification

This article is an oversimplification of the patent laws. The most conservative approach is to file a patent application before disclosing or putting the invention on sale. The current law says there can be a one year grace period between when the invention is disclosed or is put on sale, and when the patent application needs to be filed. Future courts could decide differently. Additionally, it is dangerous to go past the one year grace period without having an exact fact pattern match for another case where the courts have found the disclosure or sale did not bar the patent.