File Now to Avoid Statutory Bars

Deadlines and Statutory Bars in Patent Applications

Deadlines and Statutory Bars in Patent Applications – Hi, I'm Rich Beem. I'm a patent attorney in Chicago. And I'd like to talk with you about statutory bars. Now, what does that mean? Statutory means that it has to do with the statute that is a law that has been passed by congress in the United States. And bar means you can't go there. You're barred from taking that course of action in the legal matter, in this case in your patent matter.

So a statutory bar means that you have waited too long to file your patent application. In the US there is a generous one year grace period. The US recognizes that inventors sometimes need to try out their invention to see how it works. They need to test the market to see if they can make any money on it. So the US allows this one year grace period from the first date that your invention is publically disclosed, or published even to a few people, or that has been sold or offered for sale. All of those things start the clock running. And if you want one year and a day after that first disclosure, the patent application will be barred by statute and any patent that would issue because the patent office didn't know about it, but it might be found out later, would be invalid because of that statutory bar.

Now, I mention that the US is generous in having a one year grace period. Most countries require what's called absolute novelty. What that means is that you have to file your patent application before you go public. If you went public yesterday and file your public application today, that patent application is barred in most countries.

So the key date is the filing date. If you're a US citizen, if you're going to be filing first in the US, the key date is the US filing date. That's the date that is going to count in terms of the one year bar. And you want to get that filing date as soon as you can after your invention is ready for patenting. After you know generally that it's going to work, and you can disclose it in enough detail, and while it is still secret. Why do you want to do it while it's still secret and not necessarily take advantage of that one year grace period? It's because you might want the international rights. And if you get your US filing date now while you still have absolute novelty, then you have up to a year later to file for international protection and still claim the benefit back to the priority of your US patent application.

Now, the information that I'm giving you today May 10, 2011 is valid today, but patent laws change. They change in the US and they change in other countries. There is a move right now for patent reform. And anything that is in congress is subject to change.

So the way to find out whether the statutory bar might apply to you, the way to get the patent application with the earliest possible filing day and to preserve, if possible absolute novelty, is to pick up the phone and call me. That's what I do. I work with patent applications. I understand statutory bars and the grace period and absolute novelty. My phone number is 312-201-0011. Thank you.