Antoinette M. Tease Montana Patent
Intellections
Events That Trigger the One-Year Grace Period Under U.S. Patent Law

Under U.S. patent law, inventors have one year within which to file a patent application after any one of the following events: publication of a document describing the invention, a sale of the invention, an offer to sell the invention, or public use of the invention. This one-year grace period is typically referred to as the "on sale" bar, although it can be triggered even if the invention has not been offered for sale. The first event - namely, publication - can occur anywhere in the world and trigger the one-year grace period. The next three events - that is, a sale, an offer for sale, and public use - have to occur in the U.S. in order to trigger the one-year grace period. If any of these events occurs more than one year before an inventor gets his or her patent application on file, then the invention will be unpatentable. Another way of stating this same proposition is that if more than a year goes by after one of these triggering events, then the invention is dedicated to the public domain.

In order for a sale or offer for sale to trigger the one-year grace period, the invention has to be both the subject of a commercial sale or offer for sale in the U.S., and the invention has to be ready for patenting. An invention is ready for patenting if is has been actually reduced to practice or if the inventor has prepared drawings or other descriptions of the invention that are sufficiently specific to enable a person skilled in the art to practice the invention. In Robotic Vision Systems, Inc. v. View Engineering, Inc., 249 F.3d 1307 (Fed. Cir. 2001), the Court of Appeals for the Federal Circuit (the court that handles all patent appeals) held that a verbal description of a software program satisfied the "ready for patenting" requirement when the description was provided to a software developer who was able to write the code for the program on the basis of the conversation. The lesson to take from this case is that mere verbal conversations, if sufficient to enable one skilled in the art to practice the invention, can trigger the on-sale bar when coupled with an offer for sale.

Even if the party to whom the offer is made is located outside the U.S., the grace period will be triggered if the party making the offer is in the U.S. Similarly, an offer made by a party located outside the U.S. to a party located in the U.S. will trigger the bar. An offer that is rejected, an offer that is conditional, a sale that is never actually consummated, a sale that is isolated (i.e., the only sale), a sale between two related entities, and a sale made without the inventor's consent or in violation of a nondisclosure agreement with the inventor will all trigger the on-sale bar; however, a sale that is made solely for the purpose of experimentation will not.

In determining whether a sale was made for experimental purposes, courts will consider the following factors: whether

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the inventor retained control of the product(s); whether confidentiality agreements were in place; whether records of performance and progress were kept; whether public testing was necessary to determine the operability or effectiveness of the product; how long the test period was; whether payments were made in connection with the sale; and whether changes were made to the invention as a result of the sale and subsequent use of the product. A sale that is made for the purpose of testing the market (i.e., the commercial viability) of a product does not qualify as an experimental use.

Most inventors know whether they have sold or offered a product for sale, and they know whether a sale was for experimental purposes. But the definition of a public use is not so clear. As with the sale-type events, an experimental use is not considered a public use. Giving your product away to friends, leaving the product in a place where it can be viewed by the public, and even using the product yourself outside the confines of wherever it is that you typically work on your invention can all be deemed public uses.

In Baxter International, Inc. v. Cobe Laboratories, Inc., 88 F.3d 1054 (Fed. Cir. 1996), the court held that a research scientist who left his invention in his laboratory without covering it up or locking it in a cabinet had inadvertently triggered the one-year grace period. In Beachcombers, International, Inc. v. WildeWood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994), the court held that a woman who showed her kaleidoscope to guests at a party for purposes of generating discussion and garnering feedback on her invention also triggered the one-year grace period. The key factor in most public use cases is whether the inventor gave up control of his or her invention. Although the presence or absence of a confidentiality agreement is a factor courts will consider in determining whether there has been a public use, it is not determinative. In fact, if a confidentiality agreement is breached and your invention becomes public as a result of that breach, the one-year grace period is triggered regardless of whether you were aware of the breach. You may have a cause of action against the other party for breach of contract, but you can still lose your patent rights.

One important point to keep in mind before conducting any activity that could trigger the one-year grace period is that most countries other than the U.S. are "absolute novelty" countries, which means that you lose your patent rights as soon as your invention becomes public. Thus, it is important to consult with a patent attorney early on so that you can develop a strategy that will preserve your foreign filing rights. While business and financial considerations may dictate the order in which you proceed, the most conservative approach in terms of protecting your patent rights is to get a patent application on file before testing the market, displaying the product at a trade show, writing an article about your invention, or even bouncing ideas off your friends.
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Patent Law for the New West
The information in this newsletter is provided for informational purposes only and should not be considered legal advice. Please consult a qualified attorney for advice on a specific legal matter.

2004 Antoinette M. Tease, P.L.L.C. All Rights Reserved.

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