Natural Entrepreneur: Patents: Use It and Lose It

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Patents: Use It and Lose It

After a year of public use, an unpatented invention goes into the public domain

-- by Katherine A. Wrobel & Peter A. Nieves, Hayes Soloway, Manchester, NH

The United States Government permits exactly one year of public, non-experimental use prior to filing for a patent. Wait one day beyond that year, and you will forfeit your invention to the public domain.

You have invented something great and shared your concept with friends, family, and coworkers; maybe you have marketed your creation commercially. You or your friends already may be using your invention under the assumption that “later on” you could elect to invest in a patent. Unfortunately, you cannot assume that you may indefinitely obtain a patent once your invention is in public use here in the United States.

This steadfast deadline has foiled many new inventors’ attempts at patenting. For example, in 1881 the United States Supreme Court invalidated a patent on a corset with specially designed corset springs because the invention was in unrestricted public use for more than one year prior to filing an associated patent application.

In this exemplary case, the inventor constructed the corset for his “friend” and allowed her unrestricted use of the corset for more than 11 years before filing a patent application. The court held that the friend’s wearing of this discreet garment without limitation or so much as a promise of secrecy, constituted public use. The Court opined that the inventor’s unrestricted disclosure to only one person nevertheless constituted “public” use because unrestricted use of merely one article could constitute public use and because the inventor was not in control of his invention while his friend was using it.

United States patent law allows non-experimental public use of an invention here in the U.S. within a one-year window preceding filing for a patent application. Once that one-year period lapses, an inventor is forever barred from obtaining a patent. The corset case exemplifies the stringency with which the Government applies this public use bar.

This one-year window, however, is specific to patent law in the United States. Unfortunately, many foreign countries do not provide such a window and instead deem public use an absolute bar to patentability. Of course, different foreign countries set different standards for what actions constitute public use. Inventors, therefore, should understand the law in foreign countries of interest prior to any public use.

The rationale for such rigorous enforcement in the U.S. and in foreign countries speaks to the underlying purpose of patent law.

The Government grants patents to encourage inventors to advance public knowledge rather than to secretly maintain a monopoly over an invention that otherwise could benefit society. In the U.S., patent rights are in truth “negative rights,” empowering a patent holder to bar others from making, using, selling, or importing the patented invention for a limited term of up to 20 years (14 years for patents on designs).

By the end of the patent term, the invention has benefited society, and, the public at large, excepting any outstanding licensee, is freely permitted to manufacture, use, sell, and import the invention. Because the inventor ultimately releases to the public domain the rights to manufacture, use, sell, and import his invention, he is incentivized with a temporary 20-year period of exclusivity.

With this principle in mind, consider the above-mentioned corset case. The inventor shared his invention with his friend who benefited from the technological advancement for many years. Theoretically, she could have shared this invention with any member of the public, and, by her own admission, she had. The corset springs were not under the inventor’s control and were, therefore, in the public domain. The Court barred the inventor from retracting from society that which he had already contributed, meaning that the inventor no longer could exclude others from manufacturing, using, and selling his invention.

Although the invention in this case was in use for the better part of a decade prior to the patent filing date, the Government sets as a bar to patentability the low threshold of one year of public use. This means that soon after an inventor conceives of his invention and reduces it to practice, he should consider quickly moving to file for a patent if he chooses to implement his invention publicly in the United States and beyond any experimental test period.

An exception to the public use bar exists for cases of experimental use. Experimental use avoids tolling of the one-year, statutory public use bar, but a determination as to whether the experimental use exception applies depends upon several factors including:

a. the necessity for public testing;
b. the amount of control over the experiment retained by the inventor;
c. the nature of the invention;
d. the length of the test period;
e. whether payment was made;
f. whether there was a secrecy obligation;
g. whether records of the experiment were kept;
h. who conducted the experiment;
i. the degree of commercial exploitation during testing;
j. whether the invention reasonably requires evaluation under actual conditions of use;
k. whether testing was systematically performed;
l. whether the inventor continually monitored the invention during testing; and
m. the nature of contacts made with potential customers.

Application of the above factors is dependant upon the type of invention. In general, if you have any questions with regard to application of the public use statutory bar and use of the experimental use exception to the public use statutory bar, you should consult a patent attorney.

Katherine A Wrobel (kwrobel@hayes-soloway.com), an associate with the patent, trademark, and copyright law firm Hayes Soloway, received her J.D. from Suffolk University Law School and her B.S. degree in Mechanical and Aerospace Engineering from Cornell University.

Peter A. Nieves (pnieves@hayes-soloway.com), a partner with Hayes Soloway, received his J.D. from Franklin Pierce Law Center (FPLC) and his B.S. degree in Electrical Engineering from SUNY at Buffalo. Mr. Nieves is also an adjunct professor at FPLC and teaches on intellectual property matters at Tuck School of Business and Thayer School of Engineering.

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