By Kurt Leyendecker

I just had a prospective client call me the other day who had originally met with us way back in 2017 about an invention he had. Back then, he decided not to proceed with the patent process presumably because of cost. Well, his circumstances have changed in the intervening five years, and he was ready to proceed with patenting his invention now.  Unfortunately, he sold a single embodiment of the invention several years ago, and as a result the invention is no longer eligible for patent protection.

The law is very clear in this regard: a patent application may be filed on an invention up to one year after the invention is either publicly disclosed(“public disclosure bar”), or offered for sale(“on sale bar”). If an inventor fails to file a patent application within the year of disclosure or offer for sale, the invention is dedicated to the public and can never be patented.

One way to prevent a public disclosure and prevent the one year clock from beginning to tick is to have the person to whom the invention is being disclosed sign an Non-disclosure Agreement (NDA). Simply put, a disclosure of the invention to a person who has signed an NDA is not a public disclosure, because the person is legally prohibited from freely disclosing the invention to others. Nevertheless, NDAs should be used sparingly and only with people you trust, but they provide a way for the inventor to more safely talk with designers, engineers and manufacturers before a patent is filed.

The prospective client did in fact have the purchaser of the embodiment of his invention sign an NDA. However, the NDA has no legal effect on the on sale bar. An offer for sale, and in this case an actual sale, of an embodiment of the invention occurred regardless of whether the purchaser had signed an NDA. Interestingly, the inventive and innovate aspect of the invention was contained in a proverbial black box and not even observable to the purchaser.  The purchaser had and presumably still has no idea the particulars that made the invention potentially patentable.  Nonetheless, the on sale bar started ticking and continued to run once the inventor offered a product embodying the invention to the eventual buyer.  In fact, the on sale bar clock would have started to tick even if the would-be buyer declined to purchase the embodiment: a legally sufficient offer alone is all that is required.

To make matters worse, the patent laws of most other countries around the world, unlike the USA, do not provide any grace period let alone a one year grace period: the act of publicly disclosing an invention or offering it for sale can immediately bar patentability.

As you might imagine, the law concerning public disclosure and on sale bars is a bit more complicated than I can describe in a short blog article.  Suffice it to say an inventor is advised to seek legal counsel before disclosing his/her invention to anyone so that he/she may proceed without the risk of inadvertently forfeiting their potential patent rights.

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