Monday, February 28, 2011

How to Avoid Triggering Deadlines For Filing Patent Applications

Last week, we discussed some ways in which entrepreneurs can effectively lose the right to pursue patent protection for their potentially patentable ideas.  Namely, by offering a product or service for sale (e.g., launching a commercial website incorporating the idea) or publicly disclosing an idea entrepreneurs can cause that idea to become “prior art” against subsequently filed patent applications. 
So how can an entrepreneur avoid these harsh penalties?  First, you can avoid publically disclosing a concept until you are willing to start the U.S. grace period (and instantly lose potential rights in some countries).  If your business plan requires early disclosure to others (e.g., potential vendors, suppliers, etc.) then obtain their signatures on a good non-disclosure agreement (NDA) before making a disclosure whenever possible.  Also, mark all documents, drawings, prototypes, alpha/beta versions, etc. with warnings such as “Proprietary” or “Confidential.”  Plus, before holding discussions, verbally confirm that the other party understands that the information you are about to share is proprietary.  These steps will usually exempt the disclosure from the public disclosure rule.
As to the offer to sale issue, plan accordingly.  If you must make your first offer to sell a product or service incorporating a potentially patentable concept, make sure that you at least have a provisional patent application on file before doing so.  This means that you will need to be speaking to a patent attorney at least 3-4 months in advance of tyour first offer for sale (and/or any attempt to commercialize the idea.  You will also need to have adequate funds budgeted for the drafting process. 
Of course, the world is not perfect and entrepreneurs sometimes find that they have already made an offer for sale or made a public disclosure.  In the next posting we will discuss some strategies for dealing with these situations.  Until then, if you have a specific situation which you would like to discuss, please contact m at or visit


  1. If a software idea has been in code for several years, but the code has not been shipped to a customer, has the grace period been exceeded? Only internal employees have seen the code.

  2. Good question. It brings up several issues. First, that the code has not been seen doesn't necessarily determine whether the underlying idea has been publically disclosed. If enough information was otherwise discosed to enable someone of "ordinary skill" to reverse engineer the idea, then, there was likely a public disclosure. Second, for the offer-to-sell bar to apply 1)the idea has to be developed well enough so that that person of ordinary skill can practice the idea without having to unduely experiment and 2)an offer to sell has to have been made. So, my questions back to you would include: 1) How well developed is the idea? 2) What if any attempts have been made to commercialize the idea? And 3) what information has been released? While I posed those questions here for the benefit of the readers, let's NOT DISCUSS THE SPECIFICS HERE any furher. Contact me directly (at or through my website at if you would like to discuss the specifics further.