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Don’t Lose Your Patent Rights Before You File

Fri May 20th, 2022 by  Patents

If you or your company have developed a new product (or made an improvement on an existing one), you probably will be eager to begin using it. You at least might want to tell others about the great discovery or breakthrough you’ve made. But if you intend to apply for patent protection on it — as you should — disclosure of your invention to the public can actually prevent you from obtaining a patent. The best way to avoid losing your patent rights before you even file a patent application is to keep your discoveries secret and seek the counsel of an Alabama patent attorney

The Novelty Requirement

Applicants for patents must meet several key requirements: The invention must involve patentable subject matter, must be new (or “novel”), must be non-obvious, and must be adequately described. Of these requirements, novelty is the most well-known by the wider public. A person may not obtain a patent on an invention that someone else already invented. This concept is expressed in legal terms at 35 U.S.C. § 102

A person shall be entitled to a patent unless…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.

For patent novelty purposes, any information that has been made publicly available prior to the date a patent application is filed is known as “prior art,” and includes patents, printed publications, items on sale, and items in public use. Such information can ordinarily be discovered through an efficient patent search.   

Statutory Bars to Patentability 

So how is any of this relevant to keeping inventions secret before filing a patent application? Because there is no self-disclosure exception in prior art;  inventors themselves can inadvertently lose patent rights by disclosing their own inventions to the public. There are three “statutory bars” to patentability that can prevent the issuance of an otherwise valid patent as a result of premature disclosure. They are:   

  • Patents and printed publications: Any subject matter disclosed in a patent or printed publication is barred from being patented. Courts construe the term “printed publications” broadly to include websites, white papers, brochures, presentations, journal articles, and any other publicly available material.  
  • Public use: An invention that is in public use is one that is commercially accessible to the public or that is being commercially exploited in some way — even if the inventor is using the invention secretly and making money while doing so. 
  • On sale: An invention that is on sale is one that is the subject of a commercial offer for sale and is ready for patenting (i.e., it is a finished, rather than experimental, product). The “on sale” bar applies even where the offer for sale does not disclose any of the inventive elements of the product. 

The One-Year Grace Period

While these statutory bars may seem harsh, there is a silver lining. A disclosure made one year or less before the patent’s filing date will not be considered prior art so long as the disclosure was made by the inventor. As such, it is in any inventor’s best interest to act swiftly to file an application if he or she has made a public disclosure. 

Protect Your Patent Rights with the Help of an Alabama Patent Attorney

The best way to avoid inadvertently losing your patent rights is to involve a patent attorney in your research and development operations. For more information please contact an Alabama patent attorney at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.