You should market your invention only after you secure patent pending status. That is, after you file your patent application. Otherwise, you risk losing your patent rights if someone else files a patent application before you while you market your invention (e.g., test your product).
Significant limitations of the one-year personal grace period
U.S. patent laws give inventors a one-year grace period to test market your invention. For up to one year, inventors are allowed to publicly use, offer for sale, and distribute a printed publication of their invention without filing a patent application. These are the activities that inventors engage in when they market or commercialize their inventions. Inventors can always file the patent application before the one-year time period is up. However, if an application is not filed within one year of starting marketing efforts, the inventor is barred forever from seeking patent protection.
Relying on the one-year grace period is not recommended. Although nothing the inventor does personally during that one-year period will bar the inventor from seeking a patent on the invention, the same is not true for the actions of a third party. If a third party gives a public demonstration, makes an offer for sale, distributes a printed publication, or files a patent application related to the invention before the inventor files his or her own patent application with the USPTO, the third party’s actions would be considered prior art and may invalidate the inventor’s patent, as explained below in the section entitled “First-Inventor-to-File Regime.”
Here is the big problem if you market your invention before filing a patent application. The third party will get the patent even if the third party saw the your invention and copied it, as long as the third party is the first to file. You may have recourse against the third party, but such recourse would require an expenditure of time and money. The unpredictable nature of litigation and related costs would make seeking such redress economically unfeasible. Hence, the one-year grace period should be treated as being solely personal to you (i.e., the inventor) and not necessarily something that they can rely on to be able to safely market your invention before filing the patent application.
This is why you should market your invention only after filing a corresponding patent application and secure patent pending status. It’s not that you cannot do it. It is not worth losing patent protection after you have invested all of your time and money into launching your product.
Related article: Be wary of marketing invention before filing a patent application
The “first-inventor-to-file regime” dictates that the first inventor to file a patent application with the USPTO is awarded the patent regardless of who was the first to invent or conceive of the invention. The first-inventor-to-file rules must be understood in conjunction with the one-year personal grace period, because the rules of the first-inventor-to-file regime greatly reduce any benefit of using the one-year personal grace period. Prior to the first-inventor-to-file regime, the U.S. used to be a “first-to-invent” jurisdiction. Under the first-to-invent regime, the first of two inventors to conceive of the invention was awarded the patent regardless of when the respective inventors filed their respective applications for patent. However, under current U.S. patent laws, the first inventor to submit a patent application on an invention is awarded the patent. If a third party files a patent application before the original inventor, the patent will be awarded to the third party.
Third parties can also interfere with the original inventor’s ability to secure a patent by engaging in marketing efforts before the original inventor has submitted a patent application (see Figure 2). Any public use, offer for sale, or printed publication by a third party that occurs prior to the filing of the original inventor’s patent application is considered prior art and bars the original inventor from securing a patent. Third-party marketing efforts that occur during the original inventor’s one-year grace period can therefore bar the original inventor from patenting his or her invention, even if the third party’s actions are based on the inventor’s own marketing efforts.
An inventor risks third-party interference if he or she markets an invention during the one-year grace period before filing the patent application. The third party may observe the inventor’s marketing efforts and file their own patent application first. The first inventor to file regime does not take into consideration the date of an inventor’s conception. Instead, the USPTO only consider the filing dates of the patent applications when issuing a patent. Although there may be some recourse against a third party that submits a patent application on another inventor’s product, such recourse may be expensive to prove and the outcome unpredictable. Therefore, most inventors do not seek such recourse and instead quit marketing and selling their product to avoid patent infringement liability.
Continuing any marketing or selling of one’s product after a third party has submitted a patent application risks infringing on the patent rights of the first-to-file inventor if, and when, the patent application matures into a patent. The inventor may believe he or she is protected by a marketing date (e.g., public use, offer for sale, or printed publication) that falls prior to the filing date of the third party’s patent application and that the inventor’s marketing would invalidate the third party’s patent. However, in practice, patent litigation would not occur until many years later and the inventor would have to prove that his or her marketing efforts constitute prior art that invalidates the third party’s patent. This may seem relatively easy, but over the course of years memories fade, documents are lost, and the ability of the inventor to provide prior-use evidence may be difficult or impossible. The bottom line is that the original inventor has to deal with an issued patent by a third party. Any litigation based on the third party’s patent must still be addressed and will cost time and money.
One form of recourse is a derivation proceeding, in which the inventor must prove that the third-party inventor (i.e., first-to-file inventor) derived their patented invention from the “first” inventor. If successful, the “first” inventor is awarded the patent instead of the third party that filed first. However, a stringent reading of the law appears to require the “first” inventor to prove there was a chain of communication with the third party by which the third party derived the invention from the original inventor. This chain of communication is difficult to prove, especially when sufficient documentation of marketing efforts may be lacking.
Side Note: Another risk of using the one-year personal grace period is the potential waiver of foreign patent protection or loss of ability to file for patents in foreign countries. Many foreign countries require what is known as “absolute novelty,” which requires the inventor to initiate marketing efforts only after filing the patent application. The United States is a “relative novelty” country because U.S. patent laws allow for public disclosure of the invention through marketing efforts for a limited, one-year period before the patent application must be filed.
Market your invention: Starts when any one of the three bars to patentability occurs
The one-year grace period starts when you start to market your invention. U.S. patent laws describe marketing activities as three distinct activities. They are public use, printed publication, and offer for sale (see Figure 2 below). This is how you market your invention. They are also referred to as the bars to patentability and specify the conditions under which the one-year time period starts.
The Three Bars to Patentability: Public use, printed publication, and offer for sale
“Public use” includes any use of the invention where the public has access to such use. Non-public uses may be considered public use even if no one is around to see the product being used. For example, use of an invention by a person who is not under any limitation, restriction, or obligation of secrecy to the inventor would be considered a public use.
Even if the use is public in nature to qualify it as a public use, such use will not be considered to be public use in the eyes of the law, if such use was for the purpose of experimentation.
Related article: Public use bars patent protection unless such use is an experiment
A “printed publication” is a physical or electronic document that is indexed, catalogued, and shelved so that it is publicly accessible. In other words, it is any information that is printed on a piece of paper or stored electronically, available to the public, and categorized so that one of ordinary skill could locate such information if interested. Websites, brochures, and flyers are potential examples of printed publications. In the past, most legal disputes over whether a document is a printed publication involved thesis papers stored in university libraries. A thesis paper would be considered a printed publication if it was catalogued by subject matter in a way that the public could access it. Currently, most issues related to whether a document is a printed publication involve online publications, such as forums. The same general standard discussed above applies.
Offer for Sale
An “offer for sale” is an offer from an inventor to another person or entity to purchase a product. Even if the potential buyer does not accept the offer, it still qualifies as an offer for sale. If an offer is not from an inventor to another person or entity, it may nonetheless be considered an offer for sale. For example, once the invention has moved out of the experimentation stage, the inventor may outsource its manufacturing and place an order for a production run. The contract from the third-party contract manufacturer to the inventor may be considered an offer for sale.