If you’re thinking of patenting your invention, you need to determine whether your invention is really new. Getting to that conclusion could be more complicated than you may imagine.
A patent gives its owner the right to exclude another from using, making, selling, or importing the patented invention. Although an inventor may obtain a patent on nearly “anything under the sun that is made by man,” a patent may only be obtained on an invention that is new, useful, and nonobvious.
An invention is not new if it “was patented or described in a printed publication in this or a foreign country or in public use or on-sale in this country, more than one year prior to the date of application for patent in the United States.” Therefore, an invention is not “new” if, more than a year before a patent application for the invention is on file, (1) the invention is already patented or is described in a printed publication anywhere in the world, (2) the invention is in public use in the United States, or (3) the invention is on-sale, or has been offered for sale, in the United States.
- Printed Publication
If a printed description of the invention is available anywhere in the world, the invention is subject to the “printed publication” bar. A printed publication is not limited to journal articles and patents. Printed publications include web sites, films, slide shows, and a myriad of other mediums. Importantly, the printed publication need not be widely disseminated or easily accessible, but merely “findable.”
- Public Use
To avoid a “public use” bar, the invention may not be used in front of anyone other than the inventor or an individual who is under a duty of secrecy to the inventor. Simply put, a “public use” is a non-secret use of the invention. Importantly, whether an invention is in public use is not dependent on whether the invention is visible to the public-an invention may be in public use even if the use is not outwardly visible to the public. Some inventions can be used when they cannot be seen or observed by the public eye. For example, in one foundational patent case, the Supreme Court determined that a use of corset stays by one woman was a public use even though the stays were contained within the corset and never outwardly visible to the public. Importantly, experimental uses do not trigger a public use bar.
An invention is subject to an “on-sale” bar if, more than one year before a patent application is on file, the invention is 1) sold, or the subject of an offer to sell, and 2) “ready for patenting.” An invention is likely “ready for patenting” when it is “substantially complete.” In contrast, an offer to sell an invention concept rather than a “substantially complete invention” will not trigger the on-sale bar. Even a single offer to sell is sufficient to trigger the “on-sale” bar.
In conclusion, to ensure that your invention is “new,” you must avoid allowing the following scenarios to occur before a patent application is on file: (1) the invention is patented or described in a printed publication anywhere in the world, (2) the invention is in public use in the United States, or (3) the invention is on-sale, or offered for sale, in the United States. If any of these scenarios occur, you must get an application on file in the United States within one year of the disclosure. Although this one-year time limit may seem severe, most jurisdictions outside of the United States are “absolute novelty” jurisdictions, which treat any public disclosure as an immediate bar to patentability and offer no grace period at all. Said another way, outside of the United States, a public disclosure results in an irrevocable loss of patent rights. With careful planning, however, an unintentional loss of patent rights can be avoided.