One of the most important deadlines for patentability in the
United States is the statutory on-sale bar. Inventors should always
have this deadline in mind—it can prevent you from
obtaining a patent if you are not mindful of it, since it is one
deadline that cannot be extended.
Currently (and effective until March 16, 2013, when revisions
discussed below come into play), 35 U.S.C. Section 102
states:
"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."
35 U.S.C. 102. The general rule under that version of the
statute is that the on-sale "timer" starts is when: (i) a
product embodying the invention was offered for commercial sale,
and (ii) the invention was ready for patenting. An invention
is shown to be ready for patenting when there is "proof of
reduction to practice . . . or . . . proof that prior to the
critical date the inventor had prepared drawings or other
descriptions of the invention that were sufficiently specific to
enable a person skilled in the art to practice the invention."
Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67-68
(1998).
Although there is a lot of interpretation around the fringes of the
statute, the rule under current law is relatively clear: once the
invention was sold in the United States or publicly disclosed
anywhere, the timer was set allowing one year to file a patent
application.
Now enter the Leahy-Smith America Invents Act, which revised
Section 102 and will go into effect on March 16, 2013. As
revised, the on-sale bar under the Leahy-Smith America Invents Act
is, arguably, a little more complicated than the original
version. The following provisions will create the on-sale bar
under the revised Act:
"A person shall be entitled to a patent unless . . . (a)(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."
The exceptions (there are additional ones, but the one provided
below is the main exception) are broken out separately, and
preserve part of the 12-month grace period:
"(b) 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."
If you think the new statute is a little clunky, you aren't
the only one. However, if you are the inventor, the on-sale
bar remains roughly the same, and you should keep the 12-month rule
in mind; an inventor must file (or decide not to file) within one
year of publicly disclosing or selling the invention.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
