Unpatentability Creep: Yet Another Way to Fall into the Publicly Announced Sales Pitfall

On occasion an Entrepreneur will have the good fortune (or marketing skill) to make a sale before having completely worked out how to make their invention work.  In other words they might pre-sale their product/service.  Under current U.S. law, that is now a potential problem.

As we discussed previously, publicly announcing a sale of a product/service incorporating an otherwise patentable idea can render that idea unpatentable.  While the Helsinn decision (see our last posting) did reiterate the requirement that an invention must also be ready for patenting (the Inventor knows enough about it to make it work), the Helsinn decision could nonetheless be an issue in the real world.

This result is so because Entrepreneurs are geared to sell their products.  Additionally, the marketing and research and development (R&D) teams might be somewhat ignorant of each other’s activities.  Thus, it could happen, that marketing might make a pre-sale while R&D still has work to do before understanding the invention well enough to meet the “ready for patenting” standard.  And, of course, both a "public" sale (or perhaps just an offer) and the ready for patenting condition must be present before triggering the offer-for-sale rule.  

But, once that pre-sale has occurred AND (CAPS intentional) is announced AND the invention becomes ready for patenting, that combination triggers the offer-for-sale bar on patentability.  This Blogger’s concern is that the combination of these factors could creep up on many Entrepreneurs.   

To guard against this “unpatentability” creep, Entrepreneurs should examine their marketing and R&D efforts and plans (in conjunction with one another) to ensure that before all three conditions become present that the Entrepreneur has at least filed a provisional patent application.  And that monitoring should occur on an ongoing basis as these efforts unfold and as the related planning documents evolve.

We at the Villhard Patent Group would welcome the opportunity to discuss your ideas and related marketing and R&D efforts with you.  To find more information about us, please visit www.villhardpatents.com or call us at (512) 897-0399.  You can also write us at contact@villhard patents.com.  We look forward to hearing from you soon.