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Actions That Can Affect Your Ability to Obtain a Patent
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Inventors need to be aware that there are several actions which can interfere with your ability to obtain a U.S. patent. These actions include: 1) using your invention in public; 2) offering your invention for sale; and 3) describing your invention in a printed publication. If you perform any one of these particular actions, you have exactly ONE year to file a U.S. patent application. If you wait more than a year, you are barred from obtaining a patent and any patent that you do obtain may eventually be held invalid.
While the acts of “offering your invention for sale” and “describing your invention in a printed publication” are reasonably clear from their wording, what exactly is “using your invention in public”? Unfortunately, this is a complicated area of the patent law and is not totally clear. In general, it doesn’t take much use, nor does it take much exposure to the public, to be considered a public use that triggers the one-year clock. Even one use in public by one person counts; it doesn’t take repeated uses. And even if the invention itself is a small part of a bigger product and is not readily visible to those who see or use the product, use of the product in public will start the clock. In fact, even the use of an invention to produce a product in a factory may count as a public use unless steps are taken to keep the invention secret.
In one famous patent case from 1881, for example, an inventor invented new pins for use in corsets worn by women at that time. Unfortunately, he gave samples of these new pins to his girlfriend who wore them in her corset while in public more than a year before the inventor filed his patent application. That was a bad move. Even though the pins were totally hidden under the woman’s clothes, her wearing them was considered “public use” and the inventor’s patent was eventually determined to be invalid. In another case from 1939, an inventor used his new invention to make products in his factory. Despite the fact that the factory was not open to the public, this too was considered “public use” and his patent was eventually held to be invalid.
What all of this means to the inventor is that you need to watch what you do with your invention before you file a patent application. Most of us know that an invention is vulnerable to being stolen before one files a patent application, but many fewer know about these subtle rules concerning “public use,” “offering an invention for sale,” and “printed publications.” So I strongly encourage you to talk to your patent attorney EARLY in the invention process so that these subtle rules don’t adversely affect your ability to capitalize on your idea. Your attorney will advise you how to stay well clear of these hidden landmines.
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