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The Inventor's Mentor

April 2008

Did you know that you could lose all your rIghts to your invention?

This is the fourth column of a series discussing patent law from the point of view of the individual inventor. This series of newsletters will provide you with a valuable guide for your reference. This month I will explain one of the pitfalls that could make you lose the right to patent and own your invention.

Let’s say that for the purpose of testing the profitability of your invention you have manufactured 50 prototypes. For the past 11 months you have been distributing them as samples to the purchasing department of large retail stores in the hope of getting a large contract. You have also placed advertisements on the Web to see how many bites you’ll get. Since you need to have a clear confirmation that your invention is profitable, you have postponed filing a patent. Believe it or not, in most foreign countries you have already lost all rights to your invention. The moment an invention is made public, by advertising, for example, most countries consider the invention to be in the public domain unless a patent has been filed beforehand.

In the US you still retain your right to patent but only for one year after having offered to sell or otherwise made public your invention. After one year from the first date of publication or sale, your invention goes into the public domain. According to US patent law an invention cannot be patented 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” (35USC102(b)).


What if one year is not sufficient for you to ascertain the value of your invention or even work out all the technical glitches? You can always file a provisional application. Two great advantages of provisional applications is that they are less expensive than non-provisionals and any number of them can be rolled into a single non-provisional application or an international (PCT) application as long as the non-provisional or PCT is filed within one year of the first provisional. For more information on provisional applications, see the March 2007 Newsletter. According to our scenario above you have one month left to file and this is very little time to prepare a good application. You better hurry.

To avoid the 35USC102(b) pitfall you need to understand the implication of the law at the beginning of the inventive process: before marketing, selling and publishing your invention you’ll have to make a business decision. If you think that your invention merits international filing, and if you have the funds to do so (it could cost you 10’s of thousands of dollars depending on how many countries you file in) then you cannot make your invention public until you file. However, you can always delay the decision by filing a provisional which can, within one year, be converted to a PCT application.

On the other hand, if you think that a US patent is sufficient, then you have one year to experiment publicly with sales. The US is a huge market and usually, filing in the US alone may offer the best cost/benefit ratio. Remember, you do not need to build a prototype to file for patent. All you need is a well written description of your invention, with enough detail to enable someone having ordinary skill in the art to build it. Your description should also include which, in your opinion, is the best mode or best version of your invention.


Next month we’ll discuss another topic. Stay tuned.


For archived newsletters and a lot of information for the small inventor go to: If you have any question you can contact me at (858)259-2226 or email me at This newsletter should not be construed as legal advice. ©2010 by George Levy.