A patent application must be filed within one year after an offer for sale of the invention, public use of the invention or distribution of a printed publication regarding the invention, whichever event occurs first. Otherwise, the inventor is barred from receiving patent protection for the invention. During this one year grace period, the inventors can conduct market studies, pitch the invention to investors and pursue other public endeavors to determine feasibility of the invention without waiving the right to seek patent protection in the United States. Nonetheless, there are still significant benefits to filing a patent application prior to disclosing your invention to the public. By way of example and not limitation, to preserve foreign patent rights, many foreign countries require that the patent application be filed first before any public disclosure.
The following case illustrates the meaning of an offer for sale or the “on sale” bar and illustrates one example in which an earlier filing date would have been beneficial. In RCA v. General Data, RCA (the patentee) submitted bid documents on a government project for a display system for computer generating alphanumeric characters on a standard raster scan television monitor. The defendant argued that the bid documents constituted an offer for sale triggering the start of the one year time period to file a patent application. Since the patent application was filed more than one year after submission of the bid documents, if the bid documents constitute an offer for sale, RCA’s patent would be rendered invalid. RCA contended that the bid documents could not be an offer for sale since the bid documents did not disclose all of the aspects of the invention. The Court disagreed. Although the bid documents did not disclose all aspects of the invention, the court held that such fact does not prove that the bid document is not an offer for sale of the invention. The issue of whether the invention was on sale may be established by any relevant evidence outside of the bid documents (e.g., memoranda, drawings, correspondence memoranda, drawings, correspondence, and testimony of witnesses). In this case, an RCA witness testified that RCA intended to incorporate the invention into the device if their bid was accepted by the government. Hence, the bid documents constituted an offer for sale. RCA v. General Data, 12 USPQ2d 1449 (Fed. Cir. 1989).
One exception to the “on sale” bar is that the offer for sale does not trigger the start of the one year time period if the inventor was still experimenting with the invention. Unfortunately for RCA, an RCA witness testified that an actual working prototype of the invention was made before the bid documents were submitted. Thus, the experimental use exception did not apply.
Businesses may generate a quote for their product, software, or service. The quote may trigger the one year time period in which the inventor or business must file an application for patent under the on sale bar discussed above. This is a hard date. There are no extensions or petitions. As such, based on the foregoing discussion, it is advantageous to file patent applications as early as possible to mitigate inadvertent loss of patent rights.
- Public Use Bars Patent Protection After One Year Unless such Use is an Experiment
- Preventing Loss of Patent Rights
Should you have any further questions, please feel free to contact me.