Public-Use Bar: What Startups Need To Know

• Jurisdiction: United States,Federal
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Subject Matter: Intellectual Property, Patent
• Author: Charlotte R. Stewart-Sloan, PhD and Jessamine N. Lee
• Published date: 30 October 2023

"Even prototypes expected to be subjected to further development should be tightly controlled and not employed to perform revenue-generating activities until appropriate patent applications have been filed."

Startups often face many competing pressures. Two such pressures that are frequently at odds with each other are the need to adequately protect the intellectual property that will be the basis for future revenue and investment, and the need to bring such revenue and investment into the business to allow for continued technology development and commercialization. Many startups are aware of how the on-sale bar interacts with these pressures and the associated need to file patent applications on any technology prior to offering or placing it on sale. However, fewer startups are aware of the public-use bar and how activities pursued with the goal of growing their businesses may unwittingly invoke it. This article provides an overview of the public-use bar and instructive examples from case law where startups and other patentees were ensnared by it.

Understanding the Statute

The public-use bar is set out in 35 U.S.C. ' 102(a), which states that: "A person shall be entitled to patent unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention." Courts have interpreted "public use" in 35 U.S.C. ' 102(a) and its precursors to encompass two types of activities: (1) those that involve commercial exploitation of the claimed invention; and (2) those that involve showing the invention to a non-inventor or allowing a non-inventor to use the invention without limitations, restrictions, or confidentiality obligations." Additionally, the use of the invention must be in its "natural and intended way" (sometimes formulated as "use for its intended purpose"), and the invention must be "ready for patenting." Whether an invention is "ready for patenting" is assessed in the same manner for both the public-use bar and the on-sale bar. Briefly, an invention is "ready for patenting" upon reduction to practice or upon the creation of a description that would allow those skilled in the art to practice it. The courts have found that public use can occur even if the details of the invention are kept secret as long as the use falls within one of these categories. For this reason, startups should be careful to avoid using prototypes in revenue-generating activities prior to patent application filing, such as using them...