Everyone views the world through a prism, and the prism I look through is different than the prism others look through. That should hardly come as a surprise given that we each find ourselves at any point in time being where we are as a result of the journey we have taken. It is, therefore, not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be success. I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A to point B, but I do know that with every choice there are associated risks. When I hear people say that inventors do not need to start with a patent and can wait to file a patent application I cringe. It is not that this is universally bad advice, but it certainly comes with a lot of risk. I wonder whether inventors and small businesses are informed of the associated risk, and whether they realize that by waiting they may forever lose the ability to obtain a patent.
Generally speaking, an invention can be patented if it is new and non-obvious. What obviousness means these days is just about as clear as mud, thanks to the US Supreme Court decision in KSR v. Teleflex. For now lets take a leap of faith and just pretend that there is a consensus with respect to what is and what is not obvious, and save that thorny issue for another day. At least in the first instance when determining whether an invention is patentable that is the way to proceed, because if your invention is not new we never have to ask whether it is obvious.
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Like virtually every other question in the patent field, the questions surrounding “newness” and whether an invention is new cannot be addressed with a simple, straight forward answer. There is a matrix of considerations that needs to be navigated. Specifically, there are two primary parts to “patent newness.” First, did something occur prior to your date of invention that demonstrates you are not the inventor, and someone beat you to the invention? Second, despite being the true first inventor did you waited to long to file a patent application? It is this second aspect of newness that causes real problems for those who do not file a patent application as soon as possible. As you will see when you read on, the actions of people other than yourself can and do frequently create a problem. On top of that, the problem created may be unknown to you until it is to late to do anything about it.
The relevant law in question is 35 USC 102, which is titled “Conditions for patentability; novelty and loss of right to patent.” Secion 102(a) presents the prototypical newness question associated with the first prong above, are you the first to invent. Section 102(a) states:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent…
As you can see, the focus is on whether certain events, specifically knowledge or use in the US, or a patent or printed publication describing the invention became available, before the date of invention. This is called a “novelty” section because the trigger is the date of invention. If these things occurred prior to your date of invention you really were not the first to invent, and you are not entitled to a patent.
Compare and contrast 102(a) with 102(b). Section 102(b) states:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…
Notice here that we are again asking about patents and printed publications, but we are also now concerned with whether the invention was on sale in the US or in public use in the US. This time the trigger is the date a patent application is filed in the US, so if these things happened more than one year before the date you file a US patent application you are prevented from ever obtaining a patent, even if you were the first to invent. This is called a “statutory bar” and is one of the things that cause patent attorneys to lie awake at night and to have malpractice insurance. It is also one reason why filing a patent application as early as possible is a wise move. Simply stated, tThere is absolutely NO way to overcome a statutory bar. The US Supreme Court and every other court that has ever issued rulings related to 102(b) have consistently ruled that one year means one year, no exceptions. Not even a single day beyond one year can be forgiven or excused.
The real difficulty with respect to 102(b) is that while the inventor can create their own problem, it is also possible for other people to create a problem for an inventor. So those who are unknown to the inventor can and create statutory bar problems. So while it is commonly said that the US is a first-to-invent country, that is only half the story. If you are the first to invent and wait to long to file your patent application you simply cannot obtain a patent.
While many inventors believe their invention is so unique that no one else could have or would have ever thought of it, let alone done it, the reality is that due to the laws of nature as we understand them at any given time there are a finite number of possible solutions to any given problem. That means that individuals in search of a solution to a known problem are likely to find solutions that are similar, if not identical. That is why a patent search is so important, but it is also why people you don’t know and inventions you did not know about can and will create problems for you under 102(b).
The moral of the story is that waiting to file a patent application comes with risk. Only one of the risks associated with waiting has been discussed. There are others, but none quite so severe and unforgiving as 102(b). If you wait you may lose your right to obtain a patent, so it is always better to file early rather than wait. Business decisions and financial realities may suggest a deviation, which is fine and may even be appropriate, but making a decision without knowing and weighing the risks can lead to truly unfortunate results.
For more information on this topic see this information available on the USPTO website:
- 35 U.S.C. 102(b) – 2100 Patentability
- Rejections Based on Publications and Patents
- Rejections Based on “Public Use” or “On Sale”
- “Public Use”
- “On Sale”