Entrepreneurs typically undertake a number of efforts in order to sell a product. They demonstrate their products to the public and one-on-one to buyers. They may engage in cold calls to set up customer meetings, place informational content on a website to provide more information about the product and attach files to e-mails. These efforts can be broadly categorized as a public use, offer for sale and a distribution of a printed publication, all of which are potential bars to patentability under U.S. patent laws.
In the United States, an entrepreneur technically has up to one year to file a patent application after triggering one of the above bars to patentability. As soon as the entrepreneur engages in one of the efforts above, the entrepreneur has exactly one year to file a patent application, otherwise, any invention embodied in the product is dedicated to the public. The entrepreneur need not file a patent application prior to marketing. The entrepreneur can market the invention for up to one year then at the last minute file a patent application to seek patent protection. The issue is whether this course of action is recommended, especially under the First-Inventor-to-File system. The simple answer is “no” for the following reasons.
Since the United States patent system follows a first-inventor-to-file rule, the option of marketing first and only later filing an application has potentially catastrophic ramifications.
If the entrepreneur markets first and then files at a later date, a third party seeing the product or invention might file a patent application on a modified version of the product or invention. Under the first-inventor-to-file rule, the third party is awarded the patent and the third party’s patent application is now prior art to the entrepreneur’s later filed patent application – except under very limited circumstances where the entrepreneur might be able to prove that the third party derived the invention from the entrepreneur.
The entrepreneur likely would not find out about the third party’s patent filing until possibly years downstream because the third party’s earlier patent filing and the entrepreneur’s later patent filing must work their way through the examination queue at the United States Patent and Trademark Office and that could take years. In the meantime, the entrepreneur would have spent years and tens, if not hundreds of thousands of dollars marketing the product or invention only to find out years later that the third party filed a patent application first which could bar the entrepreneur’s patent application from issuing as a patent.
As noted, if the third party file a patent application based on the entrepreneur’s efforts, proving “derivation” is one mechanisms to overcome the third party’s earlier patent application filing. However, this mechanism is expensive and the outcome is unpredictable. I expect that when the time comes to litigate the issue, most, if not all entrepreneurs would rather invest the money in other areas.
The simple solution to the problem is to file the patent application first before conducting any sort of marketing efforts. In this scenario, no third party could file a patent application based on the marketing efforts of the entrepreneur. If a third party files a patent application on similar subject matter before the entrepreneur, then this innocent type of third party would likely obtain the patent under the current law because the innocent third party was the first inventor to file and won the race to the Patent Office
The downside to the simple solution is that the entrepreneur must first invest money to prepare and file the patent application which could cost thousands of dollars, all without being able to test the market first to gain insight into the marketability of the product/invention.
I invite you to contact me with your patent questions at (949) 716-8178 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.