Monday, October 20, 2014

Post Launch Patenting and the "Offer For Sale" Death Penalty

Often entrepreneurs launch their products or services before they’ve spoken with a Patent Attorney and then find out that they have blown the chance to obtain patent protection.  As we have bemoaned here repeatedly, the America Invents Act laid a nasty trap for the un-weary with the new “offer for sale” rule.  This rule imposes an instant death penalty on any patent application filed after an entrepreneur offers for sale a product/service incorporating an otherwise patentable idea. 
Indeed, any attempt to commercialize the idea might be enough to trigger this harsh rule.  Yes, the law does provide some exceptions such as that the inventor has to understand the idea well enough to be able to describe it well enough that those possessing “ordinary skill” in the technology would be able to reproduce the invention.  Also, there is room to argue that a “private sale” (e.g. one made under a non-disclosure agreement) will fail to trigger the rule.  Yet, many entrepreneurs run afoul of this rule anyway.
For instance, launching a web service and attempting to make money off that service represents one common and understandable strategy that could trigger the rule.  Yet, a careful analysis of the launch might salvage some patentable material.  In some cases, for a variety of reasons, entrepreneurs stagger their launches.  Some features might be delayed because of development delays.  Some features might be delayed for marketing considerations and so forth and so on.
In such situations, if the as-yet-unlaunched features remain un-commercialized, they might still be patentable.  Therefore, since it is often the case that some profitable features might be rolled out later than the core concept there might be enough life left in the product that attempting to patent it might make sense.
We at the Villhard Patent Group would welcome the opportunity to provide an initial review of your situation/launch.  For more information about us please visit us at or call us at 512-897-0399.  We look forward to speaking with you. 

Monday, October 6, 2014

Patent Reform Discussion with Senator John Cornyn in Austin, TX

Senator John Cornyn will be giving an update on patent reform on Tuesday October 7, 2014.  Capital Factory (701 Brazos Street, Suite 1601) will be hosting this event and here is a link to the Startup Week schedule

Please attend if possible and urge him to make the next round of changes more entrepreneur friendly.  More specifically, let's urge him to restore the one-year grace period that used to follow an offer for sale/attempt to commercialize an otherwise patentable idea.  For those who are unaware of this entrepreneur trap, currently in the U.S., an offer for sale immediately invalidates any subsequently filed patent application. 

The most common solution to this problem is to file a provisional application before making any offers for sale.  In addition, if you have time, examine your business plans and your R&D plans to determine when you will likely be ready to describe your idea well enough that someone of ordinary skill in the art/technology could make, use, operate, etc. your idea and when you expect to start making offers.  You should have your provisional on file before that date and/or have a non provisional application on file too (if possible).

We at the Villhard Patent Group would enjoy discussing your plans with you.  For more information about us, call (512) 897-0399 or visit us at