Patents: Use before application can bar your patent

Eighteen months ago you were the first to have conceived an invention and to have diligently reduced it to a working prototype. Today you filed your patent application.

Are you entitled to the patent? Not necessarily!

Did you disclose the invention, more than one year ago, in any printed publications or patents anywhere in the world, in a non-confidential technical description to a customer, in a sale or in a public use of the invention? If so, you may be barred from obtaining the patent under the Section 102(b) public use prohibition.

Fortunately, experimental use (such as to uncover technical problems or to determine operability) is permitted without starting the one year public use period. However, an experimental use done primarily for a commercial purpose (such as to test the invention's marketability) will be deemed a public use.

So what should you do?

Retain and work closely with an experienced patent attorney.

Disclose the invention only pursuant to an enforceable Confidentiality and Non-Disclosure Agreement.

Maintain progress reports to document experimental use.

Calendar the one year grace period after the invention's first public use.

Diligently file your patent application. If your attorney is the source of delay, ask why. If necessary, hire a different patent attorney who will give your patent application priority.