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