Patent Basics: Statutory Bars

Wealth of Ideas Newsletter, December 2004

Aspiring inventors know that if they want an issued patent, their invention must be novel, non-obvious and useful. However, even if all of these conditions are met, the patent application could be barred if it is not filed within a year of the first public disclosure of the invention.

This is known as a “statutory bar,” and the United States is virtually unique in granting this one-year “grace period.” Foreign patent laws most often require “strict novelty” – a patent application must be filed before the invention is disclosed publicly.

A wide range of activities can constitute “public disclosure” and start the clock running on the inventor’s one-year grace period. Any of the following activities, if performed within the United States, can be considered public disclosure: publicly using the invention, offering it for sale, or describing it in a printed publication. The definition of “printed publication” is also more far-reaching than one might expect; it can even extend to a posting on an Internet newsgroup, a slide show, or a trade show display.

One can also lose US patent rights by having a foreign patent issue for the same invention prior to filing the US patent application. This bar applies even if the foreign patent is later held to be invalid.

So before offering your product for sale, approaching a corporation or manufacturer with your invention, writing an article for a trade magazine about your discovery, or even sharing your news with your favorite email group, make sure that your actions will not publicly disclose your invention before you’re ready to begin your one-year grace period. And if there is any possibility that you may want to file patent applications in other countries, file the U.S. patent application first. Generally, it is best to speak with your patent attorney before making any disclosures about your invention.