Deadlines and Statutory Bars in Patent Applications – Chicago Patent Attorney Rich Beem Explains

Deadlines and Statutory Bars in Patent Applications – Chicago Patent Attorney Rich Beem Explains

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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.

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