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UK Design Patent and rules for filing in US

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SteveR

Junior Member
What is the name of your state? CA

Greetings,

I have conflicting advice from 3 patent attorneys that I hope this forum will offer some guidance. It revolves around the issue of disclosure outside the US and timeframes allowed to file in the US. I basically want to file the same patent in the US without changing the product in anyway. But as you read below, there appears to be some divergence. I'm hoping your responses will help point me one way or the other.

Background:
A products first sales in the UK occurred May 2004, and a UK design patent was filed November 2004. The product was shown on a web site May 2005.


Advice #1 - from 1 patent attorney.
The "public use" and "on-sale" bars apply only to activities that occurred in the US, therefore, these activities in the UK do not directly bar the US patent. The fact that the UK inventor applied for the design patent in the UK more than 1 year ago is the critical detail, but will not bar the patent so long as (1) the application has not be published and (2) the patent has not issued.
The net of all this is that any current sales or marketing activity in the US would start the running of a 1 year period, but that period may be cut short if the UK design patent issues - that becomes the critical detail. This attorney quotes this portion of text below to help me understand this point:
-----------------------------------------
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,
-----------------------------------------


Advice #2 - from 2 patent attorneys.
Their responses boil down to the fact that because the first public sale in the UK happened in May 2004, then that DOES constitutes disclosure, and so ANY commercial disclosure outside of the UK DOES apply to the US - and so in my case, bars me from filing the same design patent in the US.
 
Last edited:


divgradcurl

Senior Member
SteveR said:
What is the name of your state? CA

Greetings,

I have conflicting advice from 3 patent attorneys that I hope this forum will offer some guidance. It revolves around the issue of disclosure outside the US and timeframes allowed to file in the US. I basically want to file the same patent in the US without changing the product in anyway. But as you read below, there appears to be some divergence. I'm hoping your responses will help point me one way or the other.

Background:
A products first sales in the UK occurred May 2004, and a UK design patent was filed November 2004. The product was shown on a web site May 2005.


Advice #1 - from 1 patent attorney.
The "public use" and "on-sale" bars apply only to activities that occurred in the US, therefore, these activities in the UK do not directly bar the US patent. The fact that the UK inventor applied for the design patent in the UK more than 1 year ago is the critical detail, but will not bar the patent so long as (1) the application has not be published and (2) the patent has not issued.
The net of all this is that any current sales or marketing activity in the US would start the running of a 1 year period, but that period may be cut short if the UK design patent issues - that becomes the critical detail. This attorney quotes this portion of text below to help me understand this point:
-----------------------------------------
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,
-----------------------------------------


Advice #2 - from 2 patent attorneys.
Their responses boil down to the fact that because the first public sale in the UK happened in May 2004, then that DOES constitutes disclosure, and so ANY commercial disclosure outside of the UK DOES apply to the US - and so in my case, bars me from filing the same design patent in the US.

Well, in a sense, both attorneys are right. The "on sale" bar only applies to sales or offers to sell within the U.S., so your sales in the UK would not raise the "on sale" bar.

However, if, as part of your sales or marketing or otherwise, your invention was described in a printed publication anywhere in the world, then you only have a year from the publication of the printed publication to apply for a patent. There is no requirement that the publication be in the U.S., a UK publication will suffice to raise this "102(b)" bar.

Just to complicate things, however, the printed publication must be "enabling" -- in other words, the printed publication must describe your invention in enough detail so that is could conceivably be reproduced by someone else. Since you are talking about a design patent, a full drawing or photograph may be sufficiently "enabling." Just for comparison's sake, however, a simple picture or drawing would probably NOT be enabling for a utility patent.

So, if your product's pictures or drawings appeared in marketing literature or a catalog or whatever prior to January 25, 2005, no matter where in the world, it is too late to apply for a patent. If that is not the case, then your sales or offers for sale outside of the U.S. prior to January 25, 2005 would not be a bar to patentability in the U.S.
 

SteveR

Junior Member
Thanks for your reply. That's very encouraging.

So that prompts follow-up questions:

1/. Does a picture of the product (and it's basic operation as it requires some steps to use it) placed on a website on May 2005 means that the 1 year US clock starts running from then?

2/. Previous to the May 2004 sale, it was presented in various prototype forms, but always under non disclosure and no materials were created (as the product was enough to generate interest). So that seems to escape the 'printed publication' .. right?

Many thanks.
 

divgradcurl

Senior Member
1/. Does a picture of the product (and it's basic operation as it requires some steps to use it) placed on a website on May 2005 means that the 1 year US clock starts running from then?

Almost certainly. It will depend on the facts, of course, but that sounds very much like something that would trigger the clock, especially for a design patent.

2/. Previous to the May 2004 sale, it was presented in various prototype forms, but always under non disclosure and no materials were created (as the product was enough to generate interest). So that seems to escape the 'printed publication' .. right?

Showing the product under a nondisclosure is not "public" disclosure, so it would not start the clock.
 

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