What is a “public use” bar to patentability?

 “Public use” and “on sale” are often the first bars applied to the patentability of a claimed invention.  According to the America Invents Act (AIA) 35 U.S.C. § 102(a)(1),“A person shall be entitled to a patent unless...the claimed invention was … in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”  Therefore, if you sell in public or allow the public access to your invention before you filing for the patent protection, the invention is no longer patentable.

The standard for “public use” is well established by the case law.  The "seminal case" regarding “public use” is Egbert v. Lippmann, 104 U.S. 333, 336 (1881) (the corset case, which has been studied by every patent law student), where the Court posed the essential question:  "[w]as the invention's use public in the sense that it was made available to others with no limitation or restriction?"  In Dey, L.P. v. Sunovion Pharm., Inc., 715 F.3d 1351, 1355 (Fed. Cir. 2013), the CAFC reiterated that the standard for public use is where "a completed invention is used in public, without restriction." 

Public use can be negated where there exists disclosure under a confidentiality agreement or "similar expectations of secrecy," Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir. 2005).  One measure of the extent to which the disclosure is confidential (as opposed to "public") is "the amount of control which the discloser retains over the invention during the uses in question." See, Lough v. Brunswick Corp., 86 F.3d 1113, 1121 (Fed. Cir. 1996) (insufficient control); Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005) (unrestricted disclosure to employees); Beachcombers, International, Inc. v. Wildewood Creative Products, Inc., 31 F.3d 1154 (Fed. Cir. 1994) (unrestricted disclosure to party-goers); and Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1265–67 (Fed. Cir. 1986) (inventor retained control of puzzle and information).   The "sophistication of those to whom disclosure was made" is also a factor in the extent to which a use is a public use.

Public use can also be negated where some but not all aspects of an invention are disclosed. See, W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1549 (Fed. Cir. 1983) and Janssen Pharmaceutica, N.V. v. Eon Labs Mfg., Inc., 134 F. App'x 425, 431 (Fed. Cir. 2005) (all aspects of the invention must be disclosed). 

Therefore, to protect your invention against “public use” and “on sale” bar, you should only disclose your complete invention to a third party under a confidentiality agreement and don’t start selling or offering to sell or license your invention before filing for the patent protection.

Thanks for reading.

Connie

connie@patentonomy.com