Our patent law office helps inventors file hundreds of patent applications every year. Typically, this is accomplished without complication. But once is a great while, we have to inform a client that due to choices they made long before they started the patent process, their invention is unpatentable. This means that their invention will forever be in the public domain.
This may seem shocking, but yes, you can actually make mistakes that render an invention unpatentable. In some cases, patents that have already been granted are nullified when previous mistakes are discovered.
The On-Sale Bar and the America Invents Act
Prior to 2011, there were a number of ways that inventors could render their products unpatentable. One way this frequently happened was if an inventor offered their invention for sale before obtaining a patent. This was due to what is known as the “on-sale bar,” a section of 35 USC § 102 which states that an invention cannot be patented if it was “on-sale” or made publicly available more than one year before a patent application was filed.
Essentially, this meant that if you began selling your product and didn’t move to patent it within one year, you would permanently waive the ability to patent your invention. However, there were a number of exceptions to the on-sale bar. If the invention was not disclosed (published), was subject to a confidentiality agreement, or was experimental, then the on-sale bar didn’t apply.
In September of 2011, Barack Obama signed the America Invests Act, which reworked a number of aspects of the American patent system, and brought it more in line with international patent standards. While the AIA made a number of positive changes, it also confused many aspects of the on-sale bar. For the last six years, inventors and patent lawyers were largely working in the dark, not knowing exactly what could trigger the on-sale bar.
But a ruling the U.S. Court of Appeals has now clarified the issue.
Appeals Court Ruling Clarifying Scope of On-Sale Bar
In 2016, a district court ruled in a case between two drug companies that the on-sale bar only applied to public in which the invention itself was publicly disclosed. The losing party in that case appealed the decision, and a few days ago the U.S. Court of Appeals reversed the lower court’s decision.
The details of that case are bit too complex to dissect here, but the aspect of the ruling that applies to most inventors is that if any information regarding the sale of a product is publicly accessible, then the on-sale bar applies, even if details about the invention are not released.
In short, the day you make a product available for sale that incorporates your invention, you start the clock on a one year window in which you can file a patent application. If you fail to act during this window, you permanently lose the ability to file a patent.
The On-Sale Bar and Antitrust Laws
Obviously, having your patent nullified is bad. But the Patent Act works together with U.S. antitrust laws to kick you while you’re down. Under 37 CFR §1.56, every inventor is required to disclose any material pertinent to patentability, and this includes prior sales.
If the inventor does not do this, gets a patent anyway, and then tries to enforce the patent, then that action violates the Sherman Act. This effectively turns the tables on you. Now, the defendant in the lawsuit becomes the plaintiff, and can sue the patentee for treble damages and attorneys’ fees.
Sometimes clients will ask, “Well, will the patent office even know that I sold it?” The answer is always, “Yes, because you will tell them that you sold it.”
Suffice it to say, you definitely do not want to violate antitrust laws.
Other Mistakes that can Render an Invention Unpatentable
I would also like to take a moment here to mention another mistake that I have seen more than once.
The vast majority of inventors that I have worked with over the years have a single overriding concern: preventing someone from stealing their invention. While this is actually an extremely rare occurrence, the fear is understandable. But, this fear sometimes lead inventors unfamiliar with the patent system to instead try and protect their invention by filing a copyright application.
Unfortunately, this doesn’t provide any protections for an invention. But the truly horrifying issue with this is that a copyright application is a public disclosure. If you’ll recall, one of the actions that triggers the one year countdown for the on-sale bar is publicly disclosing the details of an invention. This means that a copyright application triggers the on-sale bar.
On more than one occasion, I have had to sit down and explain to a client that because they filed a copyright application for their invention more than a year prior, that it will be impossible to successfully protect their invention with a patent. It’s a terribly awkward and disappointing conversation to have, especially when an inventor has invested their time, money, and effort into something that they hoped would secure their future.
This is why it’s critical for inventors to secure the services of a patent attorney as soon as possible, in order to best protect their IP.
How to Obtain a Patent for a Product You Wish to Sell
The takeaway from all of the above is this: First, file a patent application as soon as possible. If necessary, file a provision patent application. A provisional application in particular can provide you with a lot of leeway—a good move is to file for a provisional, bring your invention to market within one year, and then subsequently file for a non-provisional patent application.
Obviously, this process is a little complicated, and it can vary depending on the nature of your invention and your personal circumstances. Again, this is why I strongly recommend contacting our office for assistance in navigating the patent process. To contact us, just call 916-760-8265, or send us a message using our site’s contact form. Don’t put your intellectual property at risk. Contact us for help.