The holiday season is upon us, therefore, it only is appropriate for your friendly intellectual property law attorneys to remind you that while everyone may be taking things more slowly than normal and putting what they feel is not important “on the back burner,” you may not want to relax if you are dealing with certain areas of intellectual property law, namely patent law.  In U.S. patent law, there are strict statutory time limits regarding how long an inventor can disclose, sell or offer for sale an invention before he or she loses rights to patent the invention.

According to 35 U.S.C. §102(b): “A person shall be entitled to a patent unless … 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 in the United States.”  This means that an inventor will not be entitled to a patent if the invention was patented more than a year before the inventor filed a patent.  The inventor will not be entitled to a patent if the invention was described in a printed publication (magazine, journal, book, internet website, brochure, published patent application, etc.) whether the printed publication was in the U.S. or another country more than a year before the date of filing for a patent. The inventor will also not be allowed to obtain a patent if the invention was used in public in the United States (whether at a trade show, by members of the inventor’s family or other uses) more than a year before the inventor filed for a patent.  Finally, the inventor will not be allowed to obtain a patent on the invention if the inventor sold or offered the invention for sale in the United States more than a year before the application for a patent was filed. 

For example, if you invented a new type of outdoor decorative lights and offered your lights to Target^® for sale on December 4, 2008, you would have until December 4, 2009 to file an application for a patent for your invention.  If you attempt to file an application for a patent after December 4, 2009, you will not be allowed to get a valid patent for that invention.  It does not matter whether or not you actually sold the lights to Target^®, the offer for sale is enough.  However, if you were to go on vacation in Canada and offer your invention for sale, or sell your invention to a business in Canada on December 4, 2008, you would not be limited by §102(b) because you did not offer your goods for sale in the United States. 

During this holiday season, if you have invented something, give yourself the greatest gift: protection of your invention.  Consider the statutory time limits and do not let something as important as your invention “sit on the back burner” while you relax in front of a warm fire with your family and friends.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com