UL Lafayette: Intellectual Property: Patent Application Filing Deadlines and Bars to Patentability

UL Lafayette: Intellectual Property: Patent Application Filing Deadlines and Bars to Patentability: "

Patent Application Filing Deadlines and Bars to Patentability
PATENT LAW YOU CAN USE™ By Howard M. Eisenberg © 1999
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Abstract - Even though an invention might meet the requirements for a patent, there are certain situations in which the availability of patent protection can be lost. These situations, referred to as statutory bars, occur when an inventor either fails to file a patent application before a deadline or abandons the intention to obtain patent protection for the invention. Once patentability is lost due to these statutory bars, it is lost forever. Therefore, inventors must be aware of their existence and how to avoid them. The right to a patent for an invention is often considered to be an exchange between the government and an inventor. The government grants to the inventor a monopoly to practice the invention for a limited period of time. During the patent term, the inventor can use government resources, such as the courts and customs departments, to prevent others from making, using, selling, or importing the patented invention. In exchange, the inventor advances scientific knowledge by teaching how to make and how to use the invention, and by dedicating the patented technology to the public after the expiration of the patent term. An invention is eligible for a patent if it is novel and non-obvious in relation to what is known. However, under certain circumstances, an inventor can lose the right to a patent by failing to take necessary steps to prevent the invention from falling into the public domain. These circumstances, referred to as statutory bars, are set forth in the U.S. Code at 35 U.S.C. §102(b), (c), and (d). As stated in 102(b), patentability is lost if, more than one year before the patent application filing date, the invention was patented or described in a printed publication, or was in public use or on sale in the United States. Section 102(c) states that patentability is lost if the inventor has abandoned the invention. Finally, according to 102(d), patentability is lost if the invention has been patented in a foreign country before a patent application has been filed in the United States and the foreign patent application was filed more than one year before the U.S. filing date. I'll discuss each of these patent bars in turn, leaving 102(b) for last because it is the most intricate and important of the bars. Abandonment, as referred to in 102(c), does not mean that the inventor has abandoned the invention itself. Rather, it means that the inventor has abandoned the intention to obtain patent protection for the invention. The issue of abandonment is never decided by the Patent Office during the application process because the Patent Office has no way to know whether an inventor had abandoned the invention before filing the application. Rather, it is an issue that is decided by a court during the course of a litigation. The requirements for abandonment have never been precisely defined. However, there are several circumstances in which courts have found that an invention has been abandoned, with loss of patentability of the invention. Abandonment may be express, such as might occur when an inventor publishes an article about the invention that states that the invention is freely useable by the public. Most commonly, abandonment has been found where an inventor has allowed others to practice the invention without restriction. Abandonment has also been found where an invention had been maintained as a secret until the inventor discovered that someone else has independently invented and is using the invention. Another situation that may lead to abandonment is the failure to claim an invention as broadly as it is disclosed in a patent application. Loss of patent rights, according to Section 102(d), applies primarily to foreign inventors who file first in their home countries. If the inventor files for patent protection in a foreign country more than twelve months before filing for patent protection in the United States, and if the foreign patent issues before the United States filing, patent protection in the U.S. is no longer available. The courts have interpreted this rule rigidly and have held this patentability bar to be effective even if the foreign patent is ruled to be invalid. Section 102(b) contains three different patent bars, each of them having a one-year grace period before patentability is lost. The first of these concerns printed publications that describe the invention. Any publication, occurring anywhere in the world, is potentially patent defeating if it is published more than one year before the date that the inventor files for U.S. patent protection. The publication may be by the applicant or by another, and may be in any form. For example, it may be a written article, an electronic message on the Internet, a brochure, a slide show, a computer file, or a poster presentation at a trade show. The only requirements for this patentability bar is that the invention is described in a publication more than one year before filing and that the description is sufficient to permit one skilled in the relevant art to make and use the invention. The extent of publication necessary to evoke the statutory bar is minimal. The cataloguing and availability of an obscure doctoral thesis in a single library was found to be sufficient publication. Distribution of a small number of brochures in a foreign country to a group totally unrelated to the field of the invention was also found to be sufficient publication to evoke the bar. Other examples of publication include non-confidential written disclosures of the invention by an individual of a company to individuals outside the company. Also, documents that are not treated as confidential, even if they are marked to be confidential, can give rise to the publication statutory bar. One common instance that is considered to be an applicable publication is an oral presentation at a conference where copies of the talk are available or where attendees are informed of the existence of a paper and its contents. I am unaware of any cases involving the situation where no hard copy of the presentation exists. However, the slides or overheads that are shown during the presentation would likely be considered to be a publication. An article that describe only the results achieved, without providing sufficient information so that one could practice the invention, is not a patent defeating publication. Also abandoned U.S. patent applications, because they are not published, do not start the one-year publication clock. A second statutory bar in 102(b) is the "on-sale" bar. If the invention, or an obvious variant of the invention, is sold or offered for sale, and substantial activities towards that sale or offer occurred in the United States, then the inventor has one year in which to file a U.S. patent application. The purpose of this bar is to prevent an inventor from exploiting the commercial value of an invention, while delaying the beginning of the patent term. This bar has been construed very literally by the courts. An actual sale is not required. An offer for sale is sufficient. The critical date is the date of the sale offer or the date of the purchase agreement, not the date of delivery. The sale may be by the inventor or by someone else. Also, as decided in Abbott Laboratories v. Geneva Pharmaceuticals Inc., 51 U.S.P.Q.2d 1307 (Fed. Cir. 1999), the on-sale bar occurs even if the seller did not know that it was the invention that was being sold. In that case, the seller Abbott Labs did not know the form of a chemical that was being sold. The court held that such knowledge was irrelevant and that the only issue to consider was whether something was sold that embodied the invention. In a recent case, Pfaff v. Wells, 48 U.S.P.Q.2d 1641 (U.S. 1998), the Supreme Court held that it is not necessary that the invention have been made or that it exist in some physical form in order for there to be a qualifying offer for sale. The critical issue is whether an invention is "ready for patenting" at the time of the sale or offer for sale. That is, if the invention has already been made or if the inventor had made drawings or other descriptions that would enable another to make and use the invention, that is sufficient. In this case, the invention had never been made and existed only as a set of drawings. The only remaining step to produce the invention was to make the necessary customized tooling. The Supreme Court ruled that, in this instance, an offer for sale more than one year before the patent application was filed did serve to render the invention unpatentable. Nebulous discussions about a product or a possible sale in which no offer for sale is made do not trigger the on-sale bar. Also, sales primarily for experimental purposes conducted in the course of completing the invention do not count as sales for purposes of the on-sale bar. The experimental use exception is narrow. Factors that are considered in determining whether a sale was for experimental purposes so as not to invoke the on-sale bar include the need for testing by an entity other than the applicant, the level of control over the testing retained by the applicant, the stage of development of the invention when sold, whether applicant was paid for the sale and on what basis, whether confidentiality was required, and whether technological changes were made to the invention as a result of the testing. The final statutory bar of 102(b) is the public use bar. Any use of the invention in the United States, in public and not for experimentation, triggers this statutory bar. Like the on-sale bar, the public use bar has been construed stringently by the courts. A single public use is sufficient, even if only a single person is aware of the use. The use of an invention is public even if the invention cannot be observed by the public. Therefore, public use of an article made by a secret process has been held to be a public use of the process. Also, the use of a corset in public was held to be public use of the corset, even though nobody except the inventor and the lady wearing the corset were aware of its existence. Public use, for purposes of the statutory bar, may be by the inventor or by a third party, with or without the inventor's consent. However, if the third party stole the invention, any use will not be considered to be a public use. A public use has been found, even in circumstances where the user did not realize that he was using the invention. A public use will be excused, however, if it was for experimentation. The type of experimentation that qualifies for the exception is limited. It must be for determining that the invention works, not for refining the invention or to get market data. The inventor must retain control over the experimentation and must inquire or receive reports concerning the testing. If these criteria are met, consumer tests and other public uses, such as the testing of a road surface to see if it will hold up under traffic, may not trigger the public use bar. Because loss of patentability due to the statutory bars is irreversible, it is critical for patent applicants to be aware of their existence and how to avoid them. With careful planning based upon this knowledge, a patent applicant should be able to steer clear of these pitfalls.
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Reprinted by permission from the author. Howard M. Eisenberg is a biotechnology and life sciences patent attorney who represents a number of university clients. His particular area of concentration is in patents involving human or veterinary medicine.

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