Sunday, February 20, 2011

The First Three Things That Entrepreneurs Need To Know About Patents

Note: This article has been updated to account for the America Invents Act

The first three things that entrepreneurs need to know about patents involve how entrepreneurs can lose the right to pursue patent protection.  First, in the U.S., the law provides that a “public disclosure” of a potentially patentable concept starts a one year grace period for the filing of a patent application directed toward the disclosed concept(s).  After the grace period expires, the disclosed information becomes “prior art” against the concept.  In other words, the applicant’s own work invalidates the patent application (if filed after the grace period).
It used to be that, similarly, an “offer to sell” a product/service incorporating a concept would also kick off a one year grace period.  But the America Invents Act (AIA) probably changed that.  Under the most common interpretation of the AIA, the grace period for offers for sale has been eliminated.  While the courts might revive it, entrepreneurs cannot count on that.  For planning purposes they should avoid making even their first offer for sale until they have a patent application filed.  

Foreign countries have different rules related to these two “statutory bars.”  For instance, many foreign countries have no law regarding offers to sell.  On the other hand, in many countries, a public disclosure of a concept operates instantaneously to bar a patent covering it. 
While this posting is a good starting point on this subject, much remains to be discussed.  For instance, the next posting will address how entrepreneurs can avoid the harsh results of these rules.  Accordingly, if you have a specific issue related to these statutory bars discuss it with a patent attorney in private.  In closing, the first three things that entrepreneurs need to know about patents are:
1)      Entrepreneurs should guard against publicly disclosing their potentially patentable concepts.
2)      Entrepreneurs should avoid offering products/services which incorporate these concepts for sale until they have filed a patent application. 
3)      Otherwise, they might jeopardize their right to pursue a patent in the U.S. and/or other countries.

We at the Vilhard Patent Group would be happy to discuss these aspects of the law with you.  For more information visit our website at, contact us at or call us at (512) 897-0399.   

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