Originally published by Law360, New York, September 20,
2012.
Under current statute, the public use of an invention or an
offer for sale within one year of filing a patent application does
not serve as a bar to novelty. Under the America Invents Act,
enacted by the U.S. Congress in 2011, new provisions related to
novelty will take effect on March 16, 2013. With these provisions,
companies will need additional safeguards on their intellectual
property, including experimental or prototype products, until their
associated inventions are fully described in filed patent
applications.
Unlike previous patent law, the AIA does not expressly provide
an eligibility exception for inventions that are within the public
use or on sale prior to the effective filing date of a patent
application. While the AIA provides an exception for disclosures by
the inventor within a year of filing, it is not clear whether this
exception covers the sale of an invention by the inventor or
