Public Use Bar for Patent Eligiblity

Menu 

The United States has traditionally enforced a few statutory bars to obtaining a patent for an invention. One of them is the public use doctrine, which was left unchanged by the America Invents Act passed in 2011. This bar to patentability is found in 35 USC 102(b). It says a person is not entitled to a patent if 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.  The public use and for sale provisions are sometimes used interchangeably, but they are distinct exceptions which may not always apply together.

Patents are rejected if the underlying invention was used publicly more than a year prior to filing for a patent application.  This provision was enacted to encourage inventors to file for a patent soon after completing an invention.  Otherwise, an inventor could delay his application and essentially extend patent protection on the invention.  Like most legal doctrines, the public use doctrine has been qualified by court cases over the years.

To satisfy the public use test, the invention seeking a patent must have been accessible to the public or commercially exploited.  Keeping this test in mind, an inventor should realize that even using the invention secretly can prevent him or her from getting a patent if the inventor is using it to make money.  Courts have struck down patents for inventions which were used under clothing or partially displayed in laboratories.  However, simply using an invention for private use does not make the invention ineligible for a patent.  A good example would be the inventor of the Rubik’s Cube using his cube in front of friends.   The cube would not be available to the public and would not be for sale, so it could be patented later.

Drafting a confidentiality agreement can help prevent running afoul of the public use doctrine, but it is not a foolproof plan.  The Federal Circuit was said confidentiality agreements are only one factor to be considered and are not dispositive. If an inventor does share an invention privately, he or she must still be diligent about avoiding public use, with or without a confidentiality agreement.  The best advice is to retain a patent lawyer once an invention is conceived.  A trained patent attorney will know the best practices to ensure a successful patent application down the road.

If you are an inventor, or aspire to be one, you can contact Stone Law and speak with a patent attorney at 732-444-6303 or contact us on our website.  Stone Law can help you along the patent process or assist you with defending your patent after it issues.