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I just invented something for a non-profit organization I work for that makes it easier for the members to use our equipment. If only members of the organization are using it, does that constitute "public use?" Several people have told me I should patent this item, but can I do that if it is already in use?

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Have the employees been told to keep it confidential and only use it out of sight of outsiders? If not, it is public use.

Some particular public use is ok (in the U.S.) It might qualify as experimental use. It must be the case that by the nature of the invention (a road surfacing designed to last three years under normal public use) it isn’t finished until it is tested and the uses is monitored for the effectiveness of the invention.

Also in the U.S. you get a sort-of grace period of a year after public disclosure.

In the rest of the world filing must be done before novelty is broken. In most places the issue isn’t public use but disclosing to the public. Some inventions might be such that they can be used in public without disclosing the invention. A street corner popcorn machine selling popcorn to the public but no one knows the novel heating mechanism. Public use in US but not novelty breaking in the EPO.

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I'd like to preface this with the note that I am not a lawyer. I do have quite a few patents. Practically speaking, almost all inventions created at firms are developed and tested internally before filing a patent. How else would you know it worked? I'm guessing (not a legal opinion) that so long as your invention was used only internally in the organization it would not constitute public disclosure and would still be eligible to patent. However you should consult with your organization's legal department for a better opinion.

You do realize that your organization, not yourself, probably owns the rights to the invention. Non-profit or not, if you were paid for your work while inventing, the company owns the products of your work. This is the standard way things work in the US at least. Thus is it probably up to the organization to decide to patent or not.

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  • The default for copyright is it’s the employer’s but not for patents. Without an agreement - “The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment.” Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000). It goes on to say that the exceptions are 1. There is an agreement to assign and 2. You were hired to solve a particular problem. Most states have “shop rights” where the company can practice the invention.
    – George White
    Commented Feb 5 at 18:04
  • @GeorgeWhite I was trying to relate the most of the time, employment agreements give ownership of inventions to the employer.
    – Eric S
    Commented Feb 5 at 21:31
  • definitely correct for entities that expect to develop innovations, might or might not be the case for other institutions.
    – George White
    Commented Feb 5 at 22:27

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