We often are called upon to assist our clients in developing, prototyping, testing, test marketing, and, ultimately, commercializing their inventions. A great deal of thoughtful analysis often accompanies decisions regarding not only how best to commercialize an invention, but when to do so.
The initial strategy adopted by a client, after the benefit of advice of counsel, will vary, of course, according to the specific needs of the client. That strategy, however, ultimately may range from the use of non-disclosure agreements for the preservation of secrecy in the invention, to aggressive, open-market sales activities. While the law provides a certain degree of flexibility in allowing an inventor to commercialize his or her invention before the filing of a patent application, that flexibility is not without limits. Those limitations are contained within 35 U.S.C. § 102.
As you consider patentability, and as you plan for the commercial exploitation of your invention, you should remain mindful of those constraints upon patentability that are set forth at 35 U.S.C. § 102. For your convenience and reference, Section 102 is reproduced below in its current entirety. You should study this Section and become familiar with each of its parts.
Section 102 provides:
§ 102 Conditions for patentability; novelty and loss of right to patent
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, or
(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, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371 (c) of this title [35 USC § 371(c) (1), (2), (4)] before the invention thereof by the applicant for patent, or
(f) he did not himself invent the subject matter sought to be patented, or
(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
35 U.S.C. § 102. Mindful that the needs, facts, and circumstances of each client's case are different, we do not here endeavor to exhaustively survey the law governing each subpart of Section 102. Rather, we ask that you review and become familiar, generally, with Section 102. Should you ever have concerns regarding the application of Section 102 to patentability of your invention, please call upon us.
Section 102 is of critical importance to each of us as we consider patentability and commercialization of your invention. Each of us - you as inventor and we as patent counsel - has a legally imposed "duty of candor" to the United States Patent and Trademark Office. 37 C.F.R. § 1.56 requires that we each disclose to the Office any fact, circumstance, or document that is, or may be, material to patentability. Thus, the duty of candor requires that we affirmatively disclose any event that has triggered any of the Section 102 bars to patentability.
This obligation of candor applies to each of us at all times during the pendency of your patent application. 37 C.F.R. § 1.56 states in material part that:
"The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned…."
Id. Thus, the duty applies not only to the claims of the initially filed application, but also to those of each continuation, continuation-in-part, divisional, continuing practice application, and any other type of application, without limitation, claiming priority upon that initial application. There are significant penalties associated with an intentional breach of this duty, including the sanction of immediate invalidity of the patent. In fact, the law requires that you sign and file with your patent application a declaration attesting to your understanding of these points.[1]
While each of the provisions of Section 102 is crucially important to the continuing viability of each unexpired patent, those factors attendant, specifically, to Section 102(b) receive tremendous scrutiny during every litigation to enforce or defend a patent. For this reason, and, further, to enable each of us to fulfill our respective duties of candor during the prosecution of a patent, we ask that you become most familiar with Section 102(b).
Section 102(b) often is referred to as the "on sale bar." As you have seen, Section 102(b) provides that a patent may not be obtained if, "the invention was … 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." The Section 102(b) bar is triggered, then, by any of several events occurring more than one year before the filing of a United States patent application; to wit: (1.) public use within the U.S. of the claimed invention; (2.) an offer for sale within the U.S. of the claimed invention; or, (3.) the actual sale within the U.S. of the claimed invention.
You should remain mindful that any activity to so commercialize an invention in the U.S. would trigger Section 102(b) - even a single offer for sale or actual sale. In such circumstances, a patent application must be filed prior to the expiration of one year from such triggering event. Given that it sometimes requires several months to prepare a patent application for filing, you should not view such triggering events lightly. Should you become aware that a Section 102(b) triggering event has occurred, please notify us immediately so that you and we together may plan an appropriate course of action.
Another Section 102(b) triggering circumstance occurs frequently enough that we recommend the following to your consideration: Section 102(b) would be triggered to bar patentability upon the abandonment of any priority application, without the benefit a related, co-pending, and continuing application, under circumstances wherein there had been an intervening public use, offer for sale, or sale in the U.S. more than one year before the abandonment of the priority application. It is, therefore, crucially important to patentability that once a patent application of any kind is filed, and the invention has been publicly used, offered for sale, or sold in the U.S., an unbroken chain of patent application(s) must be maintained through the ultimate date of issuance of the patent.
While there may be exceptions to many rules, we urge you to treat Section 102 as though there are no exceptions. Only through such treatment is patentability of your invention, and, ultimately, enforceability of your patent, possible.
We hope that this information will continue to be of assistance to you as you plan for the protection and marketing of your invention. Should you, at any time, have questions or concerns regarding the application of Section 102, or any of its subparts, to the facts or circumstances surrounding your invention and its commercialization, please feel free to contact us. We wish you the very best in all of your inventive endeavors.
-------------
1. You will recall that a patent search is not "perfect" in locating all prior public uses by another of the proposed invention; rather, the typical patent search conducted by this office only seeks information regarding issued United States patents. Should you be possessed of information, or come into information, during the pendency of your patent application that has material bearing upon patentability, 37 C.F.R. § 1.56 requires that you disclose it to the U.S.P.T.O. This information may take the form of published articles, sales brochures or catalogs, internet disclosures, industry-specific publications, or the like, without limitation. Should you have any question as to the importance or significance of such information, or as to its disclosure to the U.S.P.T.O., you should contact us immediately.