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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:
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. Telephone +1 703-684-4840, Facsimile +1 703-995-0318, E-mail |