This article examines the various time-related deadlines (statutory bars) that are applicable to filing a patent application either domestically at the United States Patent and Trademark Office (USPTO) or internationally.
Domestic (USPTO) Filing
One of the first questions that a patent attorney will likely ask an inventor during the initial inventor interview is whether the invention was disclosed/used publicly, sold, or offered for sale. This inquiry is critical as 35 U.S.C. 102(b) bars patentability of an invention if various conditions are present. More specifically, patentability will be barred in the United States if MORE THAN ONE-YEAR PRIOR TO filing in the United States, 1) the invention was patented or described in a printed publication ANYWHERE in the world; 2) the invention was in PUBLIC USE in the United States; OR the invention was ON SALE in the United States.
A simple shortcut for remembering the various 102(b) statutory bars is as follows: the publication or patenting of an invention can occur anywhere, while the use or sale is limited to this country (the United States), MORE THAN one year before the U.S. filing. Additionally, although the statutory bars are absolute, there is a limited experimental-use exception (which requires its own post) which if applicable, may not bar patentability.
Furthermore, in addition to the aforementioned inquiry, the attorney/agent will likely ask the inventor whether any web pages, handouts, presentations, web pages, brochures, etc. were ever generated for the invention (even a single copy or a single public use). The reason why its important to ask whether any of the aforementioned items were generated is because the Inventor may not realize that a public disclosure even occurred until asked about specific items. If any of the aforementioned items were indeed generated and disclosed to the public, patentability may be lost if a year has elapsed since the public disclosure. However, if a disclosure has occurred, and a year has not elapsed, the practitioner will likely immediately inform the inventor (or organization that will likely be assigned the patent) that patentability will be lost unless the application is filed within the one-year grace period. (see MPEP 2133.03).
Foreign Filing
Although these statutory bars may seem harsh, in comparison to most other foreign jurisdictions, the United States has one of the most liberal grace periods (of one-year). In fact, many foreign countries do not provide any sort of grace period prior to filing; therefore, any sort of disclosure of an invention prior to filing may bar patentability in such countries. However, as most foreign countries allow an Applicant to file a patent application therein within one year of filing in another country (Paris Convention), the Applicant may want to firstly file the application in the United States (and than file within the foreign country within a year) if foreign protection will likely be sought. However, notwithstanding the foregoing, if foreign protection will be sought, a proper investigation should be conducted for each particular foreign country (as patent protection is regional) prior to any public disclosure, public use, sale, or offer for sale.
Conclusion
Overall, it is nearly always preferable to firstly file a patent application prior to any public disclosure, public use, sale, or offer for sale. However, as the “real world” does not always provide for such a preference, a patent attorney should be consulted prior to any public disclosure, public use, sale or offer for sale to avoid the harsh consequences discussed above regarding statutory bars.