Public use patent is the statutory prohibition against awarding a patent for an invention that is already publicly available. By definition, patents are designed to limit the use of an invention to the patent-holder and/or his or her licensees. Public use as a bar to an invention's patentability is described by section 35 of the U.S. Code, which states that patent protection is not available if an invention was described in a print publication anywhere in the world more than a year before the patent application was filed.

Protecting an Invention

Patents prevent others from using, making, or selling your invention. The U.S. uses a first-to-file patent system, which means the first person to file a patent application owns the rights to the invention. This means that if someone else learns about your invention and files a patent first, you will no longer hold the rights to your creation. For this reason, you should avoid disclosing, selling, or sharing details about your invention before seeking patent protection.

Test for Public Use

To determine whether an invention is patentable under the American Invents Act (AIA), the United States Patent and Trademark Office (USPTO) examiners consider whether the invention has been offered to the public and/or has been exploited commercially by the inventor. The latter serves as a clear indication of public use.

Otherwise, factors that will be considered include the type of activity in which the invention was publicly available, the extent of public access, and whether those who observed the invention were required to sign confidentiality agreements. Depending on these factors, even one instance of public use can be used to contest a patent application.

While public use or sale of the invention keeps it from qualifying for patent protection, that is not necessarily the case for public knowledge unless:

  • The use was not secret and occurred in the course of commercial activities.
  • The use is traceable to a person other than the inventor who did not sign a confidentiality agreement.
  • Public use is open and has not been restricted in any way.

Use is not considered public if:

  • The invention is not on sale and cannot be used or made by others.
  • The invention is made available under a confidentiality agreement.
  • The invention is marked as confidential.
  • An expectation of secrecy has been created and the invention is not being commercially exploited.

Factors To Consider

Keep in mind that public use of an invention is not always considered non-secret. In addition, non-secret use is not automatically public use, even if the invention is not hidden from public view. This is even true if the invention is being commercially used, provided that this use preserves its secrecy.

If the invention is put on display by the inventor or one of his or her friends, family members, or associates, the court considers this public use and it will disqualify the invention from patent protection. This is even true if the invention is totally or partially hidden or is being used in any publicly accessible area, such as an open research laboratory, and/or if the person who received information about the invention does not technically understand its workings.

The existence of a confidentiality agreement is considered as a factor in whether use of an invention is public, but it is not the only factor. The court noted in Bernhardt LLC vs. Collezione Europa USA that policies that bar public use of patentable inventions are necessary to avoid extending the period in which an invention can be exclusively exploited by the patent holder. In this case, the court considered an invention displayed in an exhibition hall that was only open to a list of authorized individuals whose IDs were checked by security. The people were escorted through the hall and were not allowed to take photos or notes.

If the inventor has only used the invention in spaces where he or she has a reasonable expectation of privacy for personal enjoyment only, this is not considered public use.

Inventions shared with another inventor without the expectation of secrecy or other restrictions are considered to be publicly used. The court will consider the circumstances under which the third party had access to use the invention. For example, if the invention was sold to the third party or otherwise used commercially, this likely constitutes public use.

If you need help with a public use patent, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.