Written by attorney Jose R Mata

Additional questions for Inventor Interview

This is a continuation of an article on issues that should be discussed during inventor interviews. I use this format because it discusses patent law while putting it in the context of an inventor interview. The following is not legal advice and no attorney-client relationship is created. The below is just general information. 5. Statutory Bar based on patent or printed publication: One of the most important inquiries is whether anyone patented or described your invention in a printed publication anywhere in the world more than ONE YEAR BEFORE YOU FILE YOUR PATENT APPLICATION. This is under Section 102(b) of the Patent Act. It provides an absolute bar to the obtaining of a patent if a patent application is not filed within one year after your invention has been patented or described in a printed publication anywhere in the world. There are no exceptions, if you miss this one year grace period, you cannot obtain a U.S. patent on the disclosed invention. This is just an overview, there are lots of technical issues that would need to be considered. But, I will be asking about whether the invention has been disclosed to other in a printed publication or has been patented, and if so when. I will also be asking about whether the invention has been in public use or whether it has been the subject of a commercial offer for sale, and if so when. I will also be asking if any of the above is planned to take place in the near future. If so, we may need to move quickly to get a patent application on file. An important point is that outside of the United States, there is no one year grace period. So a description of your invention is about to be published in a printed publication and if you desire patent protection outside of the United States, either the publication must be delayed or the patent application must be filed before the publication. All of the above needs to be carefully considered in an inventor interview to determine if we have a deadline by which we have to file the patent application. 6. Statutory Bar based on commercial offer of sale: Section 102(b) also says that a patent cannot be obtained for an invention if the invention was "on sale in this country" MORE THAN ONE YEAR PRIOR TO THE DATE THAT A PATENT APPLICATION IS FILED. The phrase "on sale in this country" is vague. It is difficult to determine what that means. The United States Supreme Court clarified the meaning of that phrase in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998). In Pfaff, the Supreme Court stated that two requirements must be met before an invention in considered "on sale" under Section 102(b). The first requirement is that is that there must be "a commercial offer of sale." There is no requirement that the offer be accepted. Therefore, in an inventor interview I would ask questions about whether the invention has been offered for sale or actually sold. If there was discussion about selling the invention, then I would ask follow-up questions to determine if the discussion constituted a "commercial offer of sale." If the invention has actually be sold, I would also ask where the sale took place. If both the offer of sale and the acceptance of the offer occurred outside of the United States, then the bar of Section 102(b) might not apply -- but the specific facts showing that the sale occurred outside the United States would need to be obtained and verified. Also, I would ask questions about the timing of the offer. If the offer occurred less than one year ago, then a patent application would likely need to be filed well before the one year anniversary of the offer, to be on the safe side. The Supreme Court said that the second requirement is that the invention must be "ready for patenting." There are two ways that an invention may be ready for patenting. The first is if a working prototype of the invention has been built. If you have build a working prototype, then that would satisfy the requirement of the invention being ready for patenting. But your invention may have been ready for patenting even though no working model was built at the time an offer of sale was made. The Supreme Court said that the second way that an invention may be ready for patenting is "by proof that . . . the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention." Pfaff. Therefore, in an inventor interview where is appears that a commercial offer of sale may have occurred, I would ask about drawings or descriptions of the invention that existed at the time of the possible offer of sale. For example, it is possible that you had not yet conceived of an important and novel feature of your invention. 7. Statutory Bar Based on Public Use in the United States: Section 102(b) of the Patent Act also prohibits granting a patent to a patent applicant whose invention has been in pubic use for more than one year before a patent application is filed. A single public use more than a year before the patent application is filed would qualify as a "public use." There are technical rules. For example, there is an exception for experimental usage. Therefore, in an inventor interview, if there has been any use, then there would be follow up questions about the nature of the use, who made the use and under what circumstances, whether there were efforts to keep the use secret, whether the use constituted experimental testing, and other questions. These are just some of the subjects I cover in an inventor interview. No effort has been made to write a comprehensive list of interview subjects. Further updates to this article may be provided.

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