‘Secret Sales’ of Invention Can Destroy Novelty Requirement

One of the requirements for patentability is that the invention being patented is “new” or “novel.” 35 U.S.C. Section 102 sets forth the novelty requirement of the patent law. 35 U.S.C Section 102(a) identifies the specific disclosures that can trigger the novelty bar, including situations in which “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. Section 102(b) then provides for a one-year grace period for disclosures made by the inventor, stating “a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention … if the disclosure was made by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” Thus, the “critical date” for disclosures made by the inventor is one year before the effective filing date, i.e., the earliest priority date, of the patent application directed toward that invention. Disclosures made before that date will destroy the novelty of the invention, therefore making the disclosed invention unpatenable.