In previous articles I identified events that prevent patent protection in the United States if the applicant’s date of invention occurs after that particular event. In this article I address several occurrences that trigger a one year time window for filing the application for an invention. This window begins with the triggering event and ends with the filing date of filing the patent application within a time period that cannot exceed one year.
Although some triggering events are superficially similar to those under first to invent, they do not have any relationship to the date of invention, but only to the date of filing an application thereon. If anyone files an application for the invention after this one year window expires, then the invention is permanently barred from patent protection in the United States irregardless of who was first to invent. After the one year window without filing the public can use, produce, and sell the invention without payment to the inventor and/or owner. Because of this drastic and irreversible result, the business person must be aware of the exact triggers for this one-year time window.
First are the events that will only trigger the time window if they occur in the United States. These two legally distinguishable events are (i) public use and (ii) offering the invention for sale. Public use includes displays and demonstrations of inventions at trade fairs, exhibitions and professional events and presentations. Public use does not require a commercial purpose, that the use be in the presence of a large group, or that there be sales. Please note that public use is not always legally equivalent to public knowledge or use by others. However, generally public use requires the final tangible version or the invention must otherwise be ready for patenting. In contrast, offering the invention for sale in the United States requires circumstances that evidence the intent for commercial gain. For the offer for sale event the actual final version of the invention need not yet be in tangible existence when the offer is made.
Printed publications from anywhere in the world will also trigger the one year deadline/time window if the invention is adequately described therein. As with the printed publication in the context of first to invent, ‘printed’ is interpreted very broadly. Consequently, ‘printed’ includes, although not exclusively, all internet communications, as well as conventional slides, prints and DVDs. ‘Publication’ is also interpreted broadly, is more likely to be the key term, and is similar in analysis to interpretation for first to invent printed publications. United States patents are invariably printed publications, because they are publicly available at the moment that patent rights mature. However, patents in other countries are not always available to the public. Therefore, these patents do not qualify as printed publications in the time window context, although they may be qualified events under the first to invent rule.
The patent applicant cannot prevent occurrences, such as public knowledge or use by others, prior to his own invention. However, with time window events such as public use or offer to sell, the triggering events include the inventor’s actions, in addition to actions of others. To decrease incidence of triggers the inventor can postpone offering the invention for sale prior to filing an application. The inventor can also defer publishing a written paper that describes his invention until the application is filed. Another approach to avoid triggering this time window is the prevention of display of the invention at exhibits, trade fairs or professional events prior to filing the application.
© 2011 Adrienne B. Naumann, Esq.
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