If you want you want to seek patent protection for your invention, the invention should NEVER be marketed before filing a patent application. Why do I use such strong language? I will lay out my reasons below.
Technically, under U.S. patent laws, inventors can publicly market their ideas and inventions for up to one year before filing a patent application. Public demonstrations and offers typically mark the beginning of a product’s marketing efforts. At the one year anniversary of the start of your marketing efforts, a patent application must be filed should one wants to seek patent protection on the invention in the United States. However, under the first inventor to file system, there are significant downsides to this strategy of launching a product if patent protection is part of the product’s launch strategy.
The first inventor to file system states that the first inventor to file a patent application on an invention with the Patent Office will be granted the patent over someone else who files second. The winner of the race to the Patent Office is awarded the patent.
The date that you conceive of the invention along with due diligence in reducing the invention to practice are no longer determinative as to who will be awarded the patent. Under the old first to invent rules, the second filer could swear behind a reference to show the examiner that the second filer conceived of the invention prior to the filing date of the first to file and was diligent in reducing the invention to practice. Alternatively, a patent interference could be invoked at the Patent Office to determine who was the “first to invent.” But now, under the new AIA’s first inventor to file rules, the Patent Office simply looks at the filing dates of the respective applications to determine who should be awarded the patent.
Let’s run through a scenario where an “inventor” waits to file a patent application and does not file the patent application before marketing efforts begin. The inventor publicly markets the invention / product to the public. A third party seeing the inventor’s marketing material thinks that the product is a good idea and files his own patent application along with an additional spin. After some time but within the year, the inventor files a patent application on the invention after seeing that the marketing efforts are progressing nicely. If the inventor’s patent application was filed after the filing date of the third party’s filing, then who is awarded the U.S. patent? The third party is awarded the patent because the third part has an earlier filing date.
The third party was the first to file. There are extra downsides to the above hypothetical. First, many foreign countries require absolute novelty which means that there can be no public marketing unless the patent application is filed. Second, the inventor probably will not become aware of the third party’s first filed patent application until years later during examination. In the meantime, the investor may have invested countless hours and money to market the product only to find out later that a patent cannot be obtained because the inventor’s marketing efforts allowed someone else to file a patent application.
The inventor may have recourse to secure the patent but based on the monetary investment needed to institute a derivation proceeding and the uncertainty of litigation, it appears that most inventors that find themselves in this situation would not pursue any legal action and start on another project.
In my opinion, the best course of action under the first inventor to file rule is to file a patent application before any sort of public marketing of a product or service. It is no longer safe to test the market before filing a patent application as was possible under the first to invent rules. Hence, the one year grace period under the AIA is less useful and more dangerous compared to the one year grace period under the first to invent regime.
I invite you to contact me with your patent questions (949) 433-0900. 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.