Tuesday, October 11, 2011

Developing and Launching Products Without Patent Applications

Most start-ups need to use others to develop and/or launch a product while a patent application is unaffordable.  These situations present dilemmas. 

First, publicly disclosing an idea triggers a one year deadline for filing a related patent application.  In other countries, a disclosure places the idea in the public domain immediately.  Worse still, under the America Invents Act (AIA), offering a product/service for sale that incorporates a patentable idea (or attempting to commercialize the idea) arguably places that idea in the public domain.  However, entrepreneurs can avoid these penalties.

First, they should place all parties involved (including employees, vendors, alpha/beta testers, etc.) under NDA.  Secondly, they should mark all drawings, prototypes, etc. with proprietary warnings.  Thirdly, they should get the other party(s) to verbally confirm that the information involved is proprietary – before making the disclosure.  These actions usually remove a disclosure from the public-disclosure rule.

They should also plan their “offers” carefully.  To fall within the offer-for-sale rule, the offer (not a consummated sale) must be legally binding and the idea must be ready for patenting (the entrepreneur must be able to describe how to make, use, and operate products/services incorporating the idea).  Entrepreneurs should therefore compare their anticipated marketing, sales, and development efforts to determine when they expect to be able to describe the idea and when they expect to make their first legally binding offer. 

They should plan to file a patent application before 1) their first legally binding offer and 2) they can describe the idea well enough that others could make it.  Failing that, they should plan to commit to filing an application within one year in the hopes that the courts reinstate the one year grace period for offers for sale.  Of course, entrepeneuers should also plan to file an application before any public disclosures.

Since you probably find yourself in a unique situation, we at the Villhard Patent Group would enjoy exploring your options with you.  For more information about us, please see www.villhardpatents.com or call us at (512) 897-0399.  

Tuesday, October 4, 2011

Halloween 2012: Revenge of the Entrepreneur

Bad patents are the bane of entrepreneurs.  These zombie patents wander the country-side apparently claiming well-known technology yet somehow managing to survive the invalidity grave yard.  For years entrepreneurs have pled for weapons with which to defend themselves against these monsters.  Finally, despite its warts, the 2011 patent reform law places three new weapons (third-party submissions, post-grant reviews, and inter partes reviews) in the hands of entrepreneurs-- and just in time for Halloween 2012.

More specifically, third-party submissions will allow anyone to submit potential prior art against pending patent applications.  These submissions must occur before the earliest of the patents' allowance -- or the latter of their first office action or 6 months after their publication.  While Examiners are not obligated to give such submissions more weight than other documents, at least they will enjoy a chance of driving stakes through the hearts of bad applications.  Moreover, third-party submissions will also be available against bad patents themselves.  These submissions though will not immediately affect the validity of bad patents.  Instead, their usefulness will hopefully include handing accused infringers a source of industry-gathered killer prior art. 

Entrepreneurs will also be able to petition the Patent Office for post-grant reviews of bad patents for a variety of reasons during their first 9 months after issuance. 

Thereafter, entrepreneurs will be able to petition the office for inter partes reviews of these monsters.  However, patent reform limits the grounds of these reviews to a limited set of prior art related issues.  Patent owners, moreover, will likely oppose these reviews meaning that they will probably be expensive. Nonetheless, patent reform will allow entrepreneurs to take revenge upon bad patents starting on Sept. 16, 2012.

We at the Villhard Patent Group would be happy to discuss these subjects and other aspects of patents and the patenting process with you.  For more information about us, please see www.villhardpatents.com or call us at 512-897-0399.