NOTICE: The content of this article is intended to only provide a general guide to the U.S. patentability bars.  Advice from a patent attorney should be sought about your specific circumstances.

Patentability Bars: Public Disclosure and On Sale

In the United States, if an invention was publicly disclosed or on sale more than one-year before a patent application is filed, you typically cannot file a U.S. patent application.  In some foreign countries, if an invention was in public use or on sale just one day before a patent is filed, you cannot file a patent application (with some countries providing a 12-month or 6-month patent grace period).  In other words, if you want to preserve your foreign patent rights, you usually need to file a patent application prior to any activity that could be considered a bar to patentability.

Hence, it is important that inventors and businesses keep an invention confidential until they have decided if patent protection is desirable for their invention.  Understanding what activities can result in a public disclosure or on sale bar to patentability is important for all patentees to be aware of.  35 U.S.C. 102(b) specifies what activities will result in the loss of patent rights. 

 

Patentability in the United States – 35 U.S.C. 102(b)

35 U.S.C. 102 specifies the following for patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 102 (pre‑AIA) for application subject to the first to invent provisions prior to the AIA):

• (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; or
  • (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
  • (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
    • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
    • (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or
    • (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
• (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
  • (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
  • (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
  • (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
• (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
  • (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
  • (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

If you believe any activity by you or a third-party could be considered a public disclosure or on sale activity, you should immediately contact your patent attorney to determine your patent rights.