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The 102 One-Year Countdown Timer

Conditions for patentability and novelty are set out in 35  U.S.C. 102. The government has made this issue very complicated but the following general rules of thumb are useful.

 

If it can be proven that anyone (1) described it, (2) offered it for sale, or (3) used it ("it" is the invention) a one-year countdown timer starts from the date of such event and if the Inventor of "it" (or his assignee) has not filed a patent application before the countdown timer reaches zero NO ONE can ever obtain a patent on "it".      

 

35 USC 102: A person shall be entitled to a patent UNLESS:

 

1. Patented or Described In a Printed Publication: If the invention is disclosed to a party (other than the inventor) that conveys sufficient information to one of ordinary skill in the art so that such person has "possession" of the invention (i.e. an enabling disclosure), the one-year countdown timer starts. However, the invention can be disclosed to others and not start the clock IF "others" are subject to a non-disclosure agreement. 

 

2. Used in Public (known or used by others): Public use occurs when the invention is used in a non-experimental way and it does NOT matter if the use is in the basement of a house where the public cannot see - such is still public use. The day an invention is "used in public" (nonexperimental) the one-year countdown timer starts.  

 

3. On Sale: The day an invention is offered for sale (or sold) a one-year countdown timer starts. This is called the "on sale bar".  Two conditions need to be met to trigger the on-sale bar: (a) the invention must be the subject of a commercial offer for sale, and (b) the invention must be ready for patenting.

 

BACK DOOR SALE:  BE CAREFUL - Congress and the Courts have set a trap (mainly for individual inventors) called the "Back Door Sale".  Suppose an inventor is ready to build a prototype of his invention and hires Company-X to make a prototype.  The inventor is smart and gets a non-disclosure agreement to avoid the "disclosure to others" trap. The inventor has still started the one-year countdown timer as Company-X (that built the prototype) SOLD the prototype to the Inventor.  Thus, an "On Sale" event has occurred and the one-year countdown timer has been triggered. Now much depends on the wording of the agreement between the Inventor and Company-X.  If the inventor supplies the material and simply hires Company-X to build the prototype and the associated invoice is for "labor" (not the prototype) then the On Sale Bar may not be triggered.

 

If one believes any of the above events may have been triggered one should seek patent counsel quickly and inform such counsel of the potential timing issue.  

© 2023 by Simmons Patents

 

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