After an inventor submits a patent application to the U.S.
Patent Trademark Office (PTO), the PTO examines the application
to ensure that the invention is new. More specifically, the PTO
compares the invention to prior technology, to ensure that the
invention is different from prior technology. Such prior technology
is encompassed within the rubric "Prior Art." Art is
and old fashioned word meaning technology. Prior Art includes
any technology that the PTO can use to reject a patent claim.
Prior Art can be a perplexing concept. Inventors should understand
that their own technology might be Prior Art to their later filed
patent application, regardless of whether they can prove that
they invented the technology before any other person. Instead,
some inventors have a notion that they may safely delay filing
a patent application as long as they can prove they were the
first to invent. Thus, some inventors, having prepared lab notebooks
or other documentation, believe that they may delay filing indefinitely.
Such a belief is erroneous, because Prior Art may result from
a certain event occurring before the patent application filing
date. A lab notebook, or other evidence of invention, is irrelevant
to the issue of patent application filing date.
More specifically, Prior Art for a particular patent application
is defined by a certain federal statute, part (b) of which is
set forth below:
35 U. S. C. Section 102 - A person shall be entitled to a
patent unless . . . (b) the invention was patented or described
in a printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to the
date of the application for patent.
Section 102 part (b), refers to acts done by anyone, including
the inventor, more than a year before the application filing
date. Thus, for example, if the inventor publishes a paper completely
describing the invention, a U.S. patent application for the invention
must be filed no later than one year after the publication of
the paper.
Another event that creates Prior Art is placing a product
containing the invention "on sale" more than one year
before filing a patent application. The term "on sale"
has a special meaning in U.S. law. No public disclosure of the
invention is necessary for application of this "on sale"
provision; the entire structure of the product placed "on
sale" becomes Prior Art. This "on sale" provision
has been called a trap for the unwary, because it may apply to
certain types of marketing activity even if no formal offer for
sale occurs. Further, the "on sale" provision may apply
even if no prototype exists. Although the existence of a non
disclosure agreement may be a factor in determining whether an
invention has been placed "on sale," in general a non
disclosure agreement will not prevent a finding of "on sale."
Thus, the best strategy includes filing a patent application
within one year of commencing any marketing.
The patent laws of most other countries have provisions similar
to some parts of 35 U.S.C. Section 102 (b) but do not have a
one year grace period.
In summary, the filing date of a patent application is critical,
because many kinds of pre-filing events may create Prior Art.
