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 patent application. In most foreign countries, if an invention was in public use or on sale just one day before a patent is filed, you typically cannot file a patent application (with some countries providing a one-year 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 USC 102(b) specifies the following:
A person shall be entitled to a patent unless – … (b) the invention 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 the application for patent in the United States.
If your invention has been “publicly disclosed” or “on sale” more than one year prior to filing a patent application, you most likely have lost your patent rights. 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.
What is a “Public Use” of an Invention?
Public disclosure of an invention can be any of the following activities:
|Patenting of an Invention||U.S. or Foreign Country||Inventor or Any Third-Party|
|Disclosure in Printed Publication||U.S. or Foreign Country||Inventor or Any Third-Party|
|Displaying on a Website||U.S. or Foreign Country||Inventor or Any Third-Party|
|Showing Invention at Trade Show||U.S. or Foreign Country||Inventor or Any Third-Party|
|Showing Invention to Third-Parties Not Bound to Confidentiality||U.S. or Foreign Country||Inventor or Any Third-Party|
When is an Invention “On Sale”?
If an invention is on sale more than one–year prior to filing a patent application, your patent rights are typically forfeited. An invention may be considered on sale by any of the following activities:
|Offer to Sell Invention – Offer Accepted||U.S. Only||Inventor or Any Third-Party|
|Offer to Sell Invention – Offer Rejected||U.S. Only||Inventor or Any Third-Party|
|Sale of Invention||U.S. Only||Inventor or Any Third-Party|
|Purchasing a Prototype (a.k.a. “back door sale”)||U.S. Only||Inventor or Any Third-Party|
The following activities do not typically constitute an on sale activity:
- Offer to license the patent rights.
- Licensing the patent rights.
- Offer for sale or sale where the buyer is related to and controlled by the seller of the invention (e.g. Parent company selling to a subsidiary company).
For additional information regarding what constitutes an on sale activity, see MPEP 2133.03(b) which provides a more detailed explanation of this bar to patentability.