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 www.villhardpatents.com or call
us at 512-897-0399. We look forward to
speaking with you.
