WATCH OUT FOR STATUTORY BARS – DON’T LOSE YOUR PATENT RIGHTS

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fenwick & west \x2 Many people are aware o. the need to keep patentable inventions secret. However, .ew people other than patent lawyers understand the reasons .or the secrecy, or know the other actions that might cause an inventor to unintentionally lose the right to obtain a patent.

As a result, some inventors unknowingly engage in behaviors that impair their patent rights. In the United States, an inventor is entitled to a patent i. the invention is new, use.ul, and non-obvious.

The law describes certain conditions that can negate the cnew d status o. an invention, and thereby prevent an inventor .rom obtaining a patent even i. the invention meets the other two requirements.

These conditions are re.erred to as cstatutory bars d because they bar a patent that would otherwise be valid. The primary law controlling statutory bars is 35 U.S.C. § 102(b), which states: A person shall be entitled to a patent unless 3 (b) the invention was patented or described in a printed publication in this or a .oreign country or in public use or on sale in this country, more than one year prior to the date o.

the application .or patent in the United States. In other words, a ... more. less.

United States patent on an invention is barred i. any o. the .ollowing events occur more than a year be.ore the application is fled: (1) the invention is patented or described in a printed publication available anywhere in the world; (2) the invention is in public use in the United States; or (3) the invention is on sale in the United States. These statutory bars serve .our main purposes. First, the bars encourage the prompt disclosure o. inventions. The patent system is predicated the idea that the inventor discloses her invention in exchange .or the right to exclude others .rom practicing it. The one year time limit supports this goal by ensuring prompt fling. Second, the bars allow the public to rely on inventions that have entered the public domain without .ear that the inventor will later seek to patent it. Third, statutory bars prevent an inventor .rom delaying fling in order to extend the e..ective term o. the patent. Fourth, the bars allow an inventor to determine whether an invention is a commercial success be.ore fling the patent application. Tone Brothers, Inc. v. Sysco Corp. , 28 F.3d 1192, 1198 (Fed. Cir. 1994). Since the statutory bars can completely .orestall a patent application, it is important to understand the behaviors that are permissible and impermissible under each bar. Patented or Described in a Printed Publication The cpatented or described in a printed publication d statutory bar comes into play when a printed description o. the invention is released to the public anywhere in the world. In order to .ully bar a patent, the printed description must completely disclose the invention. However, even a partial description can narrow the available scope o. patent protection. The word cprinted d is interpreted broadly. Thus, the bar is triggered by documents stored on paper, electronic media or microflm. In re Wyer , 655 F.2d 221, 226-27 (C.C.P.A. 1981). The word cpublication d means that the printed document is .reely available to the public. A single copy o. a document distributed without restriction can trigger the bar. Documents that are shared under non-disclosure agreements (NDAs) are not publicly available and are unlikely to trigger this bar. However, care should be taken to ensure that the documents are marked cconfdential d and that the NDA is preserved .or use as evidence. In practical terms, documents distributed at trade shows, presented at con.erences, or posted on web sites can bar patents on any inventions described by the documents. In .act, a single copy o. a document, such as a college thesis, stored in a publicly-accessible library anywhere in the world, can bar a patent. Accordingly, care should be taken when Watch Out For Statutory Bars 3 Don 9t Lose Your Patent Rights Be.ore You Even File The Application by brian m. hoffman* \x3 watch out for statutory bars fenwick & west distributing white papers, printed copies o. slide show presentations, marketing materials, etc. At the least, the dates on which these documents frst became available to the public should be recorded so that a patent application can be fled within one year. In Public Use in the United States Courts use a ctotality o. the circumstances d test to determine whether an activity constitutes a cpublic use d o. an invention. In essence, this test allows a court to examine all o. the .acts surrounding the possible use and decide, on the whole, whether there was a cpublic use. d Given this legal test, an inventor should care.ully consider whether any activities utilizing an invention might trigger the statutory bar. A single use o. an invention by a person other than the inventor, absent any obligation o. secrecy to the inventor, can be a public use. In re Smith , 714 F.2d 1127, 1134 (Fed. Cir. 1983). Moreover, a use can be public even i. the inner workings o. the invention are not visible. Even a use or sale o. a product manu.actured using a secret process can be treated as a public use o. the process. Metallizing Eng 9g Co. v. Kenyon Bearing & Autoparts Co. , 153 F.2d 516, 520 (2nd Cir. 1946); Woodland Trust v. Flowertree Nursery Inc. 148 F.3d 1368, 1370-71 (Fed. Cir. 1998). There.ore, many common activities, such as displaying a product at a trade show, using so.tware to support a web site or using a process in commercial manu.acturing, can trigger the statutory bar .or any inventions used in per.orming those activities. However, an experimental use does not trigger the bar. Courts recognize that an inventor will o.ten need to test an invention in its normal environment, and hold that such tests are not public uses. An inventor claiming that a use was experimental should ensure that the .acts support this interpretation. For example, the length o. the test period and number o. tests should be comparable to tests conducted on similar inventions, detailed records should be kept on the progress o. the test, the testers should not be required to pay .or the privilege o. using the invention, and the test should be conducted in secret. Tone Brothers , 28 F.3d at 1200. On Sale in the United States An invention is placed on sale within the meaning o. §102(b) when it is: 1) the subject o. a commercial o..er .or sale; and 2) ready .or patenting. Pfaff v. Wells Elecs., Inc. , 525 U.S. 55, 67 (1998). Unlike the cprinted publication d and cpublic use d statutory bars, the on-sale bar does not have a cpublic d component. There.ore, a sale that satisfes these two conditions triggers the statutory bar even i. it was conducted in secret. In general, an o..er which the other party could make into a binding contract by simple acceptance constitutes an o..er under §102(b). Group One, Ltd. v. Hallmark Cards, Inc. , 254 F.3d 1041, 1048 (Fed. Cir. 2001). In close cases, the court will look to the Uni.orm Commercial Code ( cUCC d) .or guidance. This reliance on the UCC means that the issue may turn on evidence o. course o. dealing between the parties or o. customary practices in the industry. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc. , 322 F.3d 1335, 1348 (Fed. Cir. 2003). An invention is ready .or patenting i. the inventor has reduced the invention to practice (e.g., has made or implemented the invention). An invention is likewise ready .or patenting i. the inventor has cprepared drawings or other descriptions o. the invention that were su.fciently specifc to enable a person skilled in the art to practice the invention. d Pfaff , 525 U.S. at 67-68. In practical terms, the cready .or patenting d requirement means that an o..er .or sale cannot trigger the bar i. the inventor has not yet .ully conceived how to practice the invention. Given these requirements, certain actions, such as placing a product containing the invention in retail stores, clearly trigger the on-sale bar. However, other activities, such as advertising a product not yet on the market or pre- announcing a product might not constitute a commercial o..er .or sale within the meaning o. the law. Close situations will be decided under general contract principles as described by the UCC. Foreign Patent Laws Most countries other than the United States do not allow a one-year grace period. These countries have an absolute novelty requirement, meaning that a patent application must be fled be.ore any enabling disclosure o. the invention is made public. A cautious inventor interested in international protection should there.ore fle the United States patent application be.ore taking any action that might trigger a statutory bar. The inventor can rely on the United States fling date in .oreign countries as long as the .oreign applications are fled within one year o. the United States application. However, the converse is not true; an inventor cannot rely on a .oreign fling date to avoid a §102(b) bar. \x4 watch out for statutory bars fenwick & west In sum, the most prudent course o. action is to fle a patent application be.ore any public disclosure, use or o..er to sell an invention. I. early fling is not possible, the inventor should be aware o. the events that trigger the start o. the one-year grace period and noti.y her patent attorney o. any possible issues. When the application is fled in time, the worth o. the patent will depend on the technical merit o. the invention, and not on a court 9s interpretation o. events that may have occurred long ago. Author Brian M. Hoffman (415.875.2484, bho..man@.enwick.com) is a partner in the Intellectual Property Group o. Fenwick & West LLP. Fenwick & West represents national and international high technology and li.e sciences clients .or a wide range o. legal services, including corporate, intellectual property, litigation, employment and tax matters. ©2005, Fenwick & West LLP. All Rights Reserved.

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