BizTech Law Blog

Beware of the Statutory Bars

So you had one of those “Eureka!” moments a while ago and your epiphany is going to make millions as soon as it hits the shelves. This blog is about making sure you don’t lose your right to patent that million dollar idea by waiting too long to file a patent application.

Generally, an invention can only be patented if a patent application is filed within one year of the invention's first disclosure. A public disclosure can take the form of: 1) a publication, 2) a public use, or 3) an offer for sale. In the patent world, these events are called the statutory bars because they bar you from filing a patent on the idea if one year has elapsed since the event.

One year may seem like a long time; however, if an inventor is not diligent, these time limitations can really sneak up. For example, say your company has a new project and announces it on the company's website. Such an announcement could be construed by the Patent Office as a publication of the invention. This may be true even if your company has not yet produced a prototype. Therefore, it's important to recognize very early in the development process whether your company would like to pursue patent protection so that you do not publish, publically use, or offer for sale the invention before consulting your patent attorney.

Best Practices

Avoiding the statutory bars is easier if you have a plan. If your company routinely designs new products, it is a good idea to put together an invention disclosure program so that your employees inform management of any new developments as they are invented. This early disclosure of the invention affords management some time to decide whether to incur the cost of the patent process while the program is still being designed and perfected. An invention disclosure program is normally articulated in the company's employee handbook. These handbook provisions include a uniform invention disclosure form, which the employee will be directed to fill out, and written procedures explaining when and how to provide the completed forms to management. Many large companies actually connect a financial incentive for completing and turning in these invention disclosure forms. Small companies, however, may be intimate enough that inventions do not slip through the cracks and thus such a program may not be needed.

To protect your intellectual property rights, as an individual, small business or a corporation, seek legal counsel early on in the process.

Categories: Intellectual Property, Patents