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 bob@villhardpatents.com or visit http://www.villhardpatents.com/.

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 www.villhardpatents.com, contact us at contact@villhardpatents.com or call us at (512) 897-0399.   

Hello and Welcome to The Austin Entrepreneurs Intellectual Property (IP) Blog

Hello and welcome to the Austin Entrepreneur Network Intellectual Property (IP) Blog.  This blog serves the Austin, TX entrepreneur community by stimulating discussions regarding IP and how it affects entrepreneurs in the greater Austin area.  We invite your comments and welcome your suggestions for topics to be discussed on this page.

Since Austin is undoubtedly a high-tech mecca, this website will focus on patents.  However, issues related to trademarks, service marks, trade secrets, and copyrights will also be addressed on this page.  More specifically, we will delve into such hot topics as software and business method patents among the more conventional areas of patents dealing with electrical and mechanical devices. 

The primary blogger, Bob Villhard, is the Founder and CEO of the Villhard Patent Group.  Bob is a Rocket Scientist turned Patent Attorney (licensed to practice law in California and Missouri and registered to practice before the Patent Office throughout the U.S.).  Bob brings his NASA-can-do attitude to solving IP related issues.  He possesses 9 years of patent preparation and prosecution experience coupled with over 15 years of engineering and management experience.  For more information about Bob and the Villhard Patent Group see www.villhardpatents.com.