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The One-Year Rule

Friday, March 19, 2010 5:53 am

Many inventors seem to think that because they thought of an invention, or even built the invention, they have unlimited rights to patent their invention. That is not the case.

Inventors have said to me: “I’ve been using my invention for the past six years. Everyone who sees it, wants one. So now I want to get a patent and make some money.” To their dismay, these inventors learn about the United States Patent Office’s One-Year Rule requiring an inventor to file a patent application within one (1) year of any public use, publication, or either the offer to or actual sale of the invention anywhere in the world. After one year, the invention is considered to be in the “public domain” and free to be used by anyone. The invention is also unpatentable by anyone including the original inventor. Even the detailing of the invention to family members will start the one-year clock.

The Supreme Court established a two-part test in 1998 to objectively determine the start of the one year countdown for what is called the “on-sale bar.” Part one of the test starts the clock when the invention is offered for sale. Part two starts the clock when the invention is publicly disclosed in sufficient detail so that a working version could reasonably be made by someone in the business. Inventions that somehow do get through the Patent Office and have a patent issued in violation of the One-Year Rule can have the patent invalidated later.

There are some exceptions to the one-year time period. One exemption is provided for disclosure to a limited number of people under a signed confidentiality agreement. Experimentation under the inventor's control and within limited disclosure guidelines is another exemption. Likewise, inventions that need to be worked on or tested in the open can be exempted. For example, an inventor needing to build a prototype outdoors is normally fine as long as there are no explanations, demonstrations or the like. In other words, the inventor cannot provide any meaningful disclosure, regardless of how general, and cannot describe the function and use of the invention being built.

It is important to note that the One-Year Rule being discussed here is only for the United States and not for the rest of the world. Patent laws in other countries are mostly not as generous as the U.S. Inventors wanting to file in foreign countries, or in multiple countries, have options that only an experienced Patent Practitioner with full knowledge of the facts can properly answer.

So in order to protect your patent rights, do your homework and consult a competent Patent Practitioner before making any public disclosure of your invention, even to your family. If you are concerned that the one-year clock might have already started ticking, contact a licensed Patent Attorney/Agent immediately for a professional opinion and advice.

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