General Background

Patent protection can be absolutely barred if the claimed invention is disclosed to the public or if a commercial benefit is derived from the invention more than a year before a U.S. patent application is filed and anytime before a foreign patent application is filed.

Once a patent issues, patent rights can be lost by failing to file maintenance fees to maintain an issued patent. Maintenance fees are due 3.5 years, 7.5 years, and 11.5 years after a patent issues. These fees change from time to time so for fee information, please refer to the United States Patent and Trademark Office Web Page at USPTO Fees.

Patent rights can also be lost if prior art is later found and the validity of a patent is challenged.

The ability to enforce a patent can be lost if the patent applicant or agent committed inequitable conduct. Inequitable conduct is a highly factual and legal issue, contact us at info@iph2.comif you wish to discuss your particular situation.

Bar Due to Prior Disclosure

A public disclosure of an invention can severely hamper or eliminate your ability to obtain patent protection. But what is a public disclosure? A public disclosure is anything placed in the public domain, such as a sales pamphlet, a seminar speech, or even a product demonstration, that would allow someone to make and use your invention.

If the invention is placed on sale, it has likely been disclosed, triggering a bar date. "On sale" can mean an actual offer for sale of a particular device, or some courts have more broadly found an offer of sale occurs when you derive commercial benefit from that invention. For example, if you make widgets using a secret manufacturing method that is patentable, and then sell the widgets, you may lose the ability to patent the manufacturing method because you derived commercial benefit from the invention even though the invention is not public.

On the other hand, if proper precautions are taken, it is possible to make public experimental use of an invention without the public use bar to patentability arising. An example is the use of a new road paving material that is placed on a public road in order to experimentally determine suitability as a road paving material. This is not a public use of the paving material. Contact us at info@iph2.com to learn more about pre-filing experimental use of an invention.

With proper planning, there are many creative ways to limit inadvertent public disclosures. Often companies use internal review boards or Non-Disclosure Agreements to limit inadvertent disclosure of inventions. While the U.S. allows one year from a public disclosure to file for patent protection, outside the United States the general rule is that any public disclosure eliminates the ability to obtain patent protection.

In sum, the right to a patent in the U.S. can be lost in several ways. A patent right can be lost: (1) when the invention was described in a printed publication more than one year prior to the filing of a U.S. patent application that describes the invention, (2) when the invention was placed in public use more than one year prior to the filing of a U.S. patent application that describes the invention, (3) when the invention was placed on sale more than one year prior to the filing of a U.S. patent application that describes the invention, or (4) you have an otherwise valid patent, but you fail to pay the maintenance fees.