If You Have An Idea, Patent It

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Cheryl Tubach

June 27, 2008

Quite often, while working on various client matters, the phone rings with a prospective client on the other end of the line. I spend a few moments listening to their story thinking to myself, “If only they’d called before, I might have been able to save them money and headaches.”

Entrepreneurs, inventors or small business owners in the early stages of creating a business are focused on their business plans, funding issues, product development and a range of other daily concerns associated with creating a new business. Of course, all of this is extremely important and shouldn’t be overlooked.

What is often not considered are the consequences of disclosing their product to others prior to investigating whether or not to seek patent protection. Additionally, while beyond the scope of this article, initial product investigation as to potential infringement or other liabilities is often overlooked and detrimental.

In the United States, a patent must be filed no later than one year from public use, public disclosure or offer for sale. This one-year time period is often referred to as “the one-year grace period” and exists only in the United States. If you don’t file before the one year is up, you lose your right to protect your product under a United States patent.

Practically, what does this mean? Be careful about disclosure to anyone. If you openly share your idea with someone else, there is no guarantee that he or she won’t tell others or use the idea for their own benefit. Neighborly or cocktail party conversations; consumers testing your prototype at a mall; or meeting with a potential investor, manufacturer or customer and disclosing your product may not be a good idea. Depending on the factual circumstances, any one of these disclosures may have started the clock ticking on the one-year grace period.

Another consequence of public use, public disclosure or offer for sale often not considered by entrepreneurs, inventors or small business owners is the loss of the right-to-file for patents outside the United States. In this global economy, having patents abroad may be just as profitable and legally important as having patents in the United States and definitely should be considered for licensing purposes. Outside the United States, almost every country requires absolute novelty for patentability.

Practically, what does this mean? If you use or disclose your invention publicly anywhere in the world prior to filing a first (called “priority”) application, you cannot file in a country with the absolute novelty requirement. In other words, all your rights outside the United States are lost if you publicly disclose or use the invention prior to filing the priority patent application in the United States. Once a priority application is filed, however, public use or public disclosure of the invention does not have an effect on the ability to file for patent rights abroad as long as a subsequent foreign application (directly or via the Patent Cooperation Treaty) is filed within a prescribed time period.
 
There are several ways to preserve your rights to file for patents both in the United States and abroad. If you are not ready to file for patent protection, enter an appropriately scoped, non-disclosure agreement with the party receiving the information. Of course, this legal instrument should be reviewed and negotiated by skilled legal counsel. If you are ready to file for patent protection, do so with the assistance of a competent patent attorney prior to disclosing, using your product publicly or offering for sale. If the disclosure has already occurred, mark your calendar because it only takes one year and one day from a public use or public disclosure to forfeit your United States patent rights.
 

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