Monday, December 19, 2011

Don’t Stop the Train: More on Developing Products and Trademark and Prior Art Searches

It is a rare pleasure when an entrepreneur approaches an Intellectual Property (IP) Attorney with concurrent requests for trademark (TM) and prior art searches early on.  Both types of searches can save avoidable costs.  But, this is not to suggest that you slam the brakes on the train before you get their results. 

First, the name of your company might change during your marketing efforts.  In the meantime, you can usually use a working name without seriously impeding your efforts.  But, keep records of what names and any advertising, packaging, etc. that you use.  Hold off committing serious money to such advertising, though, until you receive the results of the search.

Patenting operates on a different time table.  The time between where you are and your (potential) patent has two primary road hazards.  One, the public disclosure bar to patentability, can be avoided by keeping your discussions under non disclosure agreements (NDA); by marking all of your documents, prototypes, etc. with proprietary warnings; and by obtaining verbal confirmation of confidentiality before discussing your idea with others. 

The other hazard, the on-sale bar to patentability, can be avoided by planning your development, marketing, and sales efforts together.  The combination to watch for in your plans is when your idea becomes “ready for patenting” and when you expect to be making offers for sale.  Here, “ready for patenting” means that you can explain the idea well enough that someone else can make the invention.  Under pre-AIA (America Invents Act) law, the convergence of both conditions (or a public disclosure occurred) triggered a one-year grace period in the U.S.  

Under the AIA, though, an offer for sale could well be fatal for your later filed application.  Entrepreneurs should take heed and not make any offer for sale until they at least have a provisional patent applicaiton filed.

Bottom line, plan your early development, marketing, and sales activities with your IP in mind.  We at the Villhard Patent Group welcome these early planning efforts.  Please contact us at or (512) 897-0399 for more information.