Preventing Loss of Patent Rights

Inventors can trigger at least four events that would bar them from obtaining a patent in the United States. Three of the events are known as the Public Use Bar, the On Sale Bar and the Printed Publication Bar. I will refer to the fourth event as the 102(d) Bar which refers to the specific code section of the law.  These concepts relate to the old patent laws, pre-AIA law and are useful in analyzing patents and patent application under the pre-AIA first to invent system.

1) Public Use: This event occurs when the invention is in public use and is ready for patenting.  (Public Use Blog Post)

2) On Sale: A sale has occurred when the invention has been offered for sale and the invention is ready for patenting.  (On Sale Bar Blog Post)

3) Printed Publication: A document is considered a printed publication when the document is disseminated or when persons of ordinary skill in the art interested in the subject matter of the invention can locate the document.

If the inventor made a public use of the invention, offered the invention for sale, and/or distributed a publication regarding the invention, then the inventor must file for a patent application within one year of earliest date of the triggering event. Otherwise, the inventor is barred (i.e., prevented) from obtaining a patent on the invention.

The United States provides a one year grace period for the inventor to file a patent application in the United States. However, other countries have different requirements. In certain foreign countries, any disclosure of the invention prior to filing a patent application will bar the inventor from obtaining a patent. As such, before disclosing the invention (e.g., offering the invention for sale, distributing sales brochures, etc.), the inventor should consult a patent attorney to discuss the implications of the three bars to patentability in the United States and in foreign countries.

The inventor triggers the 102(d) Bar when the inventor:

1) files a foreign patent application on an invention more than twelve (12) months prior to filing a United States patent application;

2) the foreign patent application is filed by the same inventor;

3) the foreign patent or an inventor’s certificate was granted before the filing date of the United States patent application; and

4) the same invention is involved in both the foreign patent application and the United States patent application.

I invite you to contact me with your patent questions at (949) 433-0900 or Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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