An applicant must file a patent application within a year of any of the following events:
- obtaining a patent for the invention in a foreign country
- disclosure in a printed publication
- public use of the invention
- an offer to sell the invention in the United States
A ‘printed publication’ has been broadly interpreted as including any disclosure made available to the public, including advertisements, documents accessible by the interested public on the Internet, documents indexed in a university library, poster presentations, abstracts, and even written or oral disclosures made without an express statement regarding confidentiality.
After a Provisional Application is filed, public disclosures of the subject matter contained therein will not affect the patentability of an invention claimed in a Utility Application claiming the benefit of the Provisional Application. However, one must use caution regarding new matter, or information that has already been disclosed but was not included in the Provisional Application.
Consider the following timeline:
1/1/2010: public disclosure of elements A, B, C, D of an invention
10/1/2010: public disclosure of new feature, element E
1/1/2011: filing of Provisional Application covering A, B, C, D
10/1/2011: public disclosure of new feature, element F
1/1/2012: filing of Utility Application covering A, B, C, D, E, F
In this case, the applicant will be barred from claiming element E because it was disclosed more than one year prior to the filing of the Utility Application; element E was not included in the Provisional Application.
The applicant will be able to claim element F. The one-year bar of publicly disclosed matter will not apply before the one-year deadline to file the Utility Application. However, the priority date for claims including element F will be 1/1/2012 rather than 1/1/2011 because element F is not included in the Provisional Application. This means that prior art dated after the filing of the Provisional Application will be usable against these claims.