Patently Indecent Exposure: Preventing Invention Exhibitionism

The "statutory bar" is the closest patent law ever gets to the public indecency laws. Under U.S. patent law, if an invention is publicly exposed more than one year before filing for patent protection, the inventor is forever barred from obtaining patent protection on that invention. Public exposure occurs in one of three ways: (1) a printed publication published anywhere in the world which describes the invention; (2) a public use of the invention in the U.S.; and (3) selling or offering to sell the invention in the U.S.1 Usually, it is the inventor's own printed publication, public use or sale that causes the problem. This article takes a look at each of the three statutory bars and suggests practices that managers and inventors can take to avoid barring behavior. Before addressing the bars, however, it is worthwhile to compare how the U.S. treats the statutory bars with how (almost) all other countries treat them. The difference is an important one.

What Is Okay Here Is Not Okay There

In the patent world, two types of countries exist: those that award patents to the first to file for patent protection and those which award patents to the first to invent. Because both types want only to award patent protection on new or novel inventions, neither type looks too kindly upon public exposure of an invention. However, first-to-invent countries are much more lenient in this regard than are first-to-file countries.

First-to-file countries, which include Brazil, China, members of the European Union, India, Japan, Korea and Russia, far outnumber first-to-invent countries. These countries tend to have simple, easy-to-remember novelty rules. For example, in the European Union, an invention is new "if it does not form part of the state of the art."2 The state of the art includes "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."3 In other words, the state of the art includes any publication, any public use, and any sale or offer for sale before the filing date of the patent application, regardless of who may have written the publication, engaged in the use, or offered the sale. The European rule is both simple and harsh. There is no window of forgiveness, no grace period.

First-to-invent countries, which include the United States and Canada, are less harsh when it comes to the statutory bars and allow publication, public use and sale prior to filing for patent protection so long as the publication, use or sale did not happen more than one year before the filing date.4 However, these countries have complex, difficult-to-remember novelty rules.5 The United States is no exception to this.

The important thing to keep in mind is, if patent protection on the same invention is being sought, for example, in both the United States and the European Union, act as if there is no grace period. The first-to-file rules trump the first-to-invent rules. Therefore, file first and sell (or publish or use) second.

The Exposure Date

A good place to begin in learning the statutory bars is to consider another section of U.S. patent law that lists the "novelty" requirements of patentability.6 If an invention was (1) known or used by others in the United States or (2) patented or described in a printed publication anywhere in the world by another before the applicant's invention date, then the inventor cannot obtain a patent on the invention. Note that novelty requires the publication or public use to be "by another." This makes sense because an inventor cannot publicize or use his or her own invention until he or she has invented it. The statutory bars, however, have no such requirement. Therefore, the inventor's own publication, public use or sale counts against the inventor. Novelty also revolves around a different date than do the statutory bars. With novelty, the critical date is the invention date. With the statutory bars, the critical date is the filing date of the patent application.

Because of those differences (summarized in the table below), an inventor can overcome a novelty rejection cited by the U.S. Patent & Trademark Office by showing the publication or public use is her or his own or that she or he invented the invention before the publication or public use by the other.7 However, under the statutory bars, whose publication or public use it might happen to be is not relevant and neither is the invention date. What matters is the filing date and if the inventor waited more than one year after the publication, public use or sale before filing the patent application, the inventor is barred from obtaining a patent on the invention.

"Publicly Accessible" and No Steps to Prevent Copying or Dissemination

Printed publications used to be limited to catalogs, magazines, books and research theses. Nowadays, printed publications include slide presentations, documents posted in electronic format on web servers, and web pages. Whether a publication qualifies as a printed publication for the purpose of the statutory bars depends on whether it has been disseminated to the public or is publicly accessible. A publication is publicly accessible "if interested persons of ordinary skill in the field of invention can locate the reference by exercising reasonable diligence."8 The public accessibility standard makes a lot of publications printed publications that one would not ordinarily think of as a printed publication.

Consider the case of Carol Klopfenstein and her colleague, Brent, Jr. (collectively "Klopfenstein"). Klopfenstein had filed a patent application on October 30, 2000, which disclosed and claimed methods of preparing foods having extruded soy cotyledon fiber.9 At the time of the application, it was already known that eating this type of food helped lower serum cholesterol levels while raising HDL cholesterol levels. What made Klopfenstein's patent application unique was that she disclosed double extrusion as a way to increase this effect and yield even better serum cholesterol lowering results.

Two years prior to filing the patent application, in October 1998, Klopfenstein, along with a colleague, M. Liu, presented a 14-slide poster-board presentation at a meeting of...