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 … [Read more...]
First to file
The first to file rule dictates the inventor who first filed a patent application on the invention with the USPTO will be awarded the patent. Browse related articles below.
Pitfalls of one year grace period under the FITF rules
Under current U.S. patent laws, the first inventor to file (FITF) a patent application on an invention is awarded the patent. This means that if two individuals separately file patent applications on the same idea, then the person who first filed its patent application in the U.S. Patent Office will be awarded the patent. The Patent Office merely looks to the filing dates of … [Read more...]
Be wary of marketing invention before filing a patent application
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 … [Read more...]
Dangers of 1 yr grace period under first-inventor-to-file system
In 2013, the United States transitioned from a first-to-invent system to a first-inventor-to-file system under the America Invents Act. A basic difference in the two systems is that the first-to-invent system focuses on the inventor’s date of conception, whereas the first-inventor-to-file system primarily relies on the filing date of the patent application to determine who is … [Read more...]
Junior filer wins patent under first to invent but not first to file
Sanofi v. Pfizer (Fed. Cir. November 5, 2013) illustrates one situation in which the older, pre-America Invents Act (AIA), first-to-invent rules benefited a junior filer, and the patent was awarded to the junior filer. Under the current first inventor to file rule, the senior filer would have been awarded the patent. In this case, Sanofi first filed a patent application on … [Read more...]
New Patent Laws (AIA) have been bad for start-ups
New Patent Laws (AIA) have been bad for independent inventors and start-ups The America Invents Act (AIA) signed by President Obama in my opinion is not better for independent inventors. Here’s why. Under the America Invents Act, the U.S. patent system switched from a first-to-invent rule to a first-to-file rule. Under the first to invent rule, the person who first … [Read more...]
Can a confidentiality agreement protect me like a patent application?
Good question. The bottom line is that a contract (i.e., confidentiality agreement or non-disclosure agreement) and a patent application protect your interests in different ways. Hence, the recommended course of action is to do both (1) file a patent application and (2) have the investors and licensees execute a confidentiality agreement to protect yourself. If you don't have … [Read more...]
File patent application prior to disclosure due to first to file rule
Inventors are not required to file a patent application before marketing their invention (i.e., product or service) to others. However, doing so is not the recommended course of action because the inventor could lose their patent rights due to the first to file rule. A third party may see the invention, make a slight modification to the invention and file a patent application. … [Read more...]