Don't Let A Disclosure Or Sale Thwart Your Patent Protection

• Published date: 19 July 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Yifan Fang, PhD, Edward J. Russavage and Usha Parker

One of the statutory bars to patentability in the United States prohibits a claimed invention from being described in a printed publication, being in public use or on sale, or being otherwise available to the public before the effective filing date of the claimed invention.¹ The first three restrictions are generally referred to as a bar on public disclosure, public use bar, and on-sale bar, while the last is a catch-all provision. The law does provide for a grace period if the restricted activity occurred one year or less before the effective filing date of a claimed invention (e.g., the filing of a patent application) and was done by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.²

While the text of the relevant section may seem straightforward, many real-world scenarios raise questions as to what constitutes a public disclosure, public use, sale, or public availability. Understanding what has been found to bar patent validity informs the type of dialogue needed with an inventor to assess whether patentability has been or may be affected. That assessment then guides next steps in protecting the inventor's intellectual property.

WHAT MAY BE DEEMED PUBLIC DISCLOSURE

The Manual of Patent Examining Procedure (MPEP), which is published by the United States Patent and Trademark Office (USPTO) as guidance to patent examiners, expands on different aspects of the public disclosure bar and on-sale bar. For example, there is currently no geographic limitation on where prior public use or availability occurs under the September 2011 law established by the America Invents Act (AIA).³ In addition, public use is clarified as referring to use by one who is under no limitation, restriction, or obligation of confidentiality to the inventor.⁴ The on-sale bar is distinct from the bar on public disclosure in that even a sale made without public knowledge to a third party buyer under obligation to keep the invention confidential can disqualify an invention from patentability.⁵ The U.S. Supreme Court set out a two-part test, referred to as the Pfaff test, to determine the applicability of the on-sale bar: whether the invention was ready for patenting, and whether the invention was subject to a commercial offer for sale. Both conditions must be true to apply the on-sale bar.⁶

On the other hand, sale or other use that is commercially exploited is distinguished from permissible...