The U.S. Patent Act provides that an inventor is barred from obtaining patent rights for an invention, and the invention goes into the public domain, when a patent application is not filed within one year of certain activities of the inventor that make the invention available to the public. This is often referred to as the “one year grace period.” Many inventors are unaware of or forget about this time limitation and mistakenly lose rights to their inventions.
Did you know that the pop icon Michael Jackson was an inventor? Michael created a gravity defying dance move often referred to as the “anti-gravity lean,” in which he has both feet on the floor and leans forward nearly 45 degrees in a gravity-defying manner. This lean first appeared in the 1987 music video (see the 7:15 mark) for the song “Smooth Criminal.” The lean again appeared in the 1988 short film (see the 8:20 mark) titled “Moonwalker” during the song Smooth Criminal. Michael first performed the song and the dance move live on stage during the second leg of his 1988-1989 Bad World Tour which began in February 1988.
The anti-gravity lean was performed with wires during the music videos but these wires could not be adequately hidden from view during live performances. To accomplish this dance move on live stage, Michael developed a system where pins were embedded into the stage floor and at the right moment special shoes with ankle support and grooves in the heels were slid over the pins to temporarily attach the shoes to the pins. Secured to the stage, Michael could lean over without keeping his center of mass over his feet.
On June 29, 1992, Michael filed a U.S. patent application titled a “Method and Means for Creating Anti-Gravity Illusion.” His co-inventors were L.A.-based fashion designers Michael Bush and Dennis Tompkins who designed most of Michael’s personal and concert tour wardrobes. U.S. Patent No. 5,255,452 was issued to them Oct. 26, 1993. Michael most likely pursued patent protection for the lean because his even more famous 1983 “Moonwalk” dance move, which became his signature, was widely copied by others.
The problem for Michael is that they filed the patent application more than four years after the invention was first publicly used. A person was not entitled to a patent if the invention was patented or described in a printed publication in this or a foreign country or was in public use or on sale in this country, more than one year prior to the date of application for patent in the United States. 35 USC 102(b) (pre-AIA). Michael’s invention was clearly in public use more than a year before filing his patent application so he was not entitled to a patent. If the patent would have been before a court or the USPTO with this information, the patent would have been declared invalid. Note that the patent examiner would not have allowed this patent to issue if she would have known this information during examination of the patent application.
Michael’s patent prematurely expired in 2005 when a patent maintenance fee was not paid (the patent could have been maintained until 2012 if all maintenance fees had been timely paid). This failure to pay the maintenance fee could be because of his well-documented money trouble but was more likely because he became aware that his patent was invalid.
Recent changes in U.S. patent law resulting from the America Invents Act (AIA) redoubles the importance of ensuring that patent applications are filed in a timely manner. Most importantly, the AIA changes the U.S. patent system from a first-to-invent system to a first-to-file system for patent applications filed on or after March 16, 2013. 35 USC 102 (AIA). In other words, a person filing a patent application before you for the same invention will prevent you from obtaining a patent even if you are the first inventor — unless you can show that the earlier applicant derived their invention from you.
Thus, even though a one-year grace period is still present after implementation of the AIA, inventors are advised to file their patent application before undertaking any activity that makes their invention available to the public. They also should consider filing their application as soon as possible after the invention is complete, even if the invention will not yet be made available to the public.