If you're selling your invention or using it publicly, you only have one year to file!

Posted Wednesday, June 8, 2011.

If you’ve invented something and brought it to market or put it into public use, in most cases you have to get a patent application on file within a year of the date you did so. Otherwise, you will likely lose the right to a patent on the invention.

An inventor who is granted a patent by the United States Patent and Trademark Office generally gets a 17-year exclusive right to the invention. Technically, for a utility patent (which is most patents) the term is 20 years from the filing date, but owing to the average of three years that it takes for an application for a patent to be examined, the effective term is 17 years.

In the United States, we have a “First to Invent” system. The first person to conceive of an invention generally is awarded the patent. Even if another inventor files an application for the same invention before the original inventor’s application is received at the USPTO, the application of the original inventor (being the first to invent, not the first to file) gets priority.

In most other countries, the first inventor to file an application has priority. There is discussion in Congress to transform the United States patent regime to this “First to File” system used in the rest of the world, but for now the United States retains a “First to Invent” system.

But it is not a “pure” First to Invent system. In a “pure” First to Invent system, there would be no deadline for filing an application once you brought your invention to market. Since your monopoly term lasts only 17 years, an inventor could theoretically wait as long as possible to file the application, until a competitor was about to file. In this manner, the inventor would be “extending” the term of the monopoly by delaying its starting date through withholding the application as long as possible. Because the inventor was the first to invent, the inventor who delayed filing in a pure First to Invent system would still be able to prevent the competitor from practicing the invention AND have a longer patent monopoly.

This issue was recognized early on, see Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829), and in 1836 the U.S. Patent Act was re-written to include a limitation on the amount of time an inventor could wait to file for a patent. That time limit is now one year.

There is another justification for the one-year time limitation. Remember the basic bargain in a patent exchange between the inventor and the U.S. government. The inventor receives the 17-year monopoly, but in exchange for a disclosure of the invention and how to make it. The government grants the exclusive rights to the inventor, and in return the invention passes into the public domain once the monopoly has expired. At that point, we all will get the benefit of the new invention, and it is in the public’s best interest for that point to come as soon as possible. Therefore, inventors are required to make that disclosure sooner, rather than later.

One very important note if you are considering patent protection in countries in addition to the United States: in most instances you don’t even get the one year. There is an absolute novelty standard in which the day you publicly use or offer to sell your invention, you lose the right to apply for a patent if you have not done so already. If you want a patent overseas, be very careful about disclosing your invention prior to applying for a patent. That’s good advice domestically, but even more critical for foreign applicants.

If you have questions about what you can and can not do publicly before an application is filed, a qualified patent agent or attorney can help you understand what activities “trigger” the one-year clock, at the end of which you must file or lose the right to do so.

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