A lthough you may not be a patent attorney, you may be asked to protect your client’s right to file a patent application on his or her inven- tion. If that occurs, it is imperative that you know how to advise him or her about filing before it’s too late. In the United States, there are eight statutory “bars to patentability.” Any one of these will forever bar an inventor from being able to file an application on an invention that may otherwise meet the criteria for patentability. If that occurs, the invention will fall into the pub- lic domain. Bars to How might these statutory bars arise? Bars to They certainly will come up during the pros- ecution of a patent application. But any one of PatentabilityPatentability these also may be raised in litigation by an accused A Guide for the infringer seeking to evade a judgment of infringe- A Guide for the ment. The defendant will try to demonstrate that GeneralGeneral the patent is invalid, despite the presumption of validity accorded by its issuance by the U.S. Patent PractitionerPractitioner & Trademark Office. Because these bars are the death knell for a client’s rights to an invention, it is important that all lawyers be familiar with them. The “Public Disclosure” Bar: 35 U.S.C. §102(b) A U.S. patent application may not be filed more than one year from the date of a publication in any country disclosing the invention or pub- lic use of the invention in this country. It does not matter whether the publication or public use is by the inventor or someone else; disclosures of the invention to any third party who is not under an obligation to keep it confidential fall within the scope of this statutory bar. A publi- cation will trigger the rule as long as the description of the invention is sufficient to permit a person skilled in the relevant field to make and use the invention. Any method of publication can start the one-year clock running, including written articles; brochures; e-mail transmissions; news- 22 ARIZONA ATTORNEY JANUARY 2005 www.myazbar.org BY KEVIN M. DRUCKER Kevin M. Drucker is a registered patent attorney at the law firm Mendelsohn & Associates, where his practice includes group, Web or Weblog postings; slide uct or service embodying the invention was Stearns et al. v. patent prosecution shows; discussions or lectures at a confer- first offered for sale or sold. Beckman for electrical and ence; trade show presentations or displays; The on-sale bar exists primarily to keep Instruments, 4 electromechanical and even making an obscure doctoral the- an inventor from exploiting the commercial two biotechnolo- technologies, software sis available in the card catalog at a single value of an invention while intentionally gy company and computer-related library. delaying the beginning of the patent term. CEOs invented technologies, semi- A single public use in the United States For example, absent the on-sale bar, an high-pressure conductors and is sufficient to start the clock, even if only a inventor who sells his or her invention for liquid chro- optical devices, med- single person is aware of the use. And the five years and then applies for a patent matography ical devices, business use of an invention in a public place is con- would effectively receive 25 years of exclu- equipment and method patents, and sidered public even if the invention cannot sive commercial rights, whereas a patent sent a prototype consumer products. be observed by the public. For example, in owner is only entitled to a 20-year maxi- to induce a cus- He can be reached the classic case of Egbert v. Lippmann,1 the mum patent term under U.S. law. tomer to buy the by e-mail at Supreme Court found that the wearing of In Pfaff v. Wells Electronics,2 the equipment. [email protected]. a corset designed for a woman by her Supreme Court held that the on-sale bar’s Later, they boyfriend was a public use, because he one-year clock begins to run when a prod- applied for and were granted a patent. placed no special restrictions on her use, uct is “the subject of a commercial offer for When they sued their competitor for patent even though the corset was not on public sale” and “ready for patenting.” The infringement, they learned that their patent display. “ready for patenting” condition may be sat- was invalid and worthless because of their It is also important to know that in isfied either “by proof of reduction to prac- earlier commercial activity. most foreign countries, there is no corre- tice before the critical date; or by proof that It is important to note that even a single sponding one-year grace period, and any prior to the critical date the inventor had offer for sale is sufficient to start the one- publication or public use prior to filing a prepared drawings or other descriptions of year clock running. It is immaterial whether patent application can eliminate patentabil- the invention that were sufficiently specific the offer for sale is made by the inventor or ity. For example, an inventor who publicly to enable a person skilled in the art to prac- someone else, or whether the sale is inno- disclosed an invention by publishing a tice the invention.”3 Thus, the on-sale bar’s cent or fraudulent. It also does not matter paper in Germany eight months ago will be one-year clock can begin to run even if the whether the offer is actually accepted or barred from filing a patent application in inventor has not actually reduced the whether the offer is made confidentially or Germany on that invention, because invention to practice by producing a physi- only to a single customer, as long as there is Germany operates under the absolute nov- cal embodiment. an attempt being made to take commercial elty requirement, and the publication of This is frequently the case with software advantage of the invention. the paper destroyed the novelty of the and Internet-related inventions, for which invention. Notwithstanding that, because the one-year clock may start to run as soon The “Patented in a Foreign U.S. law allows a one-year grace period, the as a proposed specification is provided to a Country” Bar: 35 U.S.C. § 102(d) same inventor may properly file a patent prospective purchaser or licensee of the A U.S. patent application may not be filed application in the United States and be software application, even if the software more than one year after the invention was granted a patent. application has not begun to be developed. patented in a foreign country. In any case, to avoid all potential public In this scenario, if the inventive concepts This provision applies when a foreign disclosure bar issues, inventions should be for developing the software are described in inventor files a patent application in his or disclosed to patent counsel for evaluation sufficient detail for a programmer to be her home country and waits more than a and preparation of an application well able to develop the application, then the year before filing an application for the before any proposed publication or public invention is probably “ready for patent- same invention in the United States. If the use. ing,” which starts the clock running. foreign application is granted as a patent Companies often discount the on-sale before the U.S. application is filed, the The “On-Sale” Bar: bar and do not discover the gravity of their inventor loses the right to file a U.S. patent 35 U.S.C. §102(b) disregard for the rule until they attempt to application—even if the foreign patent is A U.S. patent application may not be filed enforce their patent rights and discover that later determined to be invalid. more than one year from the date a prod- their patent is invalid. For example, in This bar exists to encourage speedy fil- www.myazbar.org JANUARY 2005 ARIZONA ATTORNEY 23 Bars to Patentability ing of patent applications in the United licensed to a manufacturer, the manufac- States. It can easily be avoided by filing a turer would later find itself unable to U.S. patent application concurrently with enforce the patent based on the fraudulent the filing of the foreign patent application, declaration of joint inventorship made by or shortly thereafter. the inventor and non-inventor in the patent application. The “Derivation” Bar: 35 U.S.C. §102(f) The “Novelty” Bar: A U.S. patent application may not be filed 35 U.S.C. §102(a) by an applicant who derived the subject A U.S. patent application may not be filed matter sought to be patented from another on an invention that was publicly known or person or source, rather than inventing it used by others or described in a printed himself or herself. publication before the inventor’s date of Although this may seem evident, the invention. consequences of noncompliance can be This bar prevents an inventor who was grave. Either intentionally naming some- not the first inventor from obtaining a one as an inventor on a patent application patent. Knowledge or use is deemed acces- who is not actually an inventor or inten- sible to the public if there has been no tionally failing to join as an applicant some- deliberate attempt to keep it secret—that one who is actually an inventor can later is, only if the public could have learned the render the entire patent void and unen- structure of the claimed device or claimed forceable during infringement litigation.