Prefiling Procedures and Considerations
Author | Dylan O. Adams |
Profession | Seattle-based patent attorney |
Pages | 47-66 |
47
4
Preling Procedures
and Considerations
“A person shall be entitled to a patent unless ... the claimed
invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the public
before the eective ling date of the claimed invention.”
—Title 35 of the United States Code, Section 102(a)
Aer coming up with a new product or business idea, many inven-
tors get stuck. ey recognize they have something to share with the
world but, at the same time, they are afra id that if they share their idea
with others it might get stolen. In other words, they want to be able to
develop, sell, and prot from their inventions while being assured that
others will not be able to copy their products without permission and
without acknowledgement of their inventorship. While it is impos-
sible to absolutely guarantee security of an idea or product, there are
several important steps that inventors should take to avoid forfeiting
their rights or creating an opportu nity for others to misappropriate an
invention before it is ready for patenting.
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48 PATENTS DEMYSTIFIED
THE NEED TO KEEP AN INVENTION SECRET
e rst rule of inventing is that inventions should ideally be kept com-
pletely secret until a patent application is led. In a perfect situation,
a patent application would be led immediately aer the invention
without disclosure to anyone outside of the inventor or group of inven-
tors. However, the reality is that absolute secrecy is not always practic al
or possible. Most inventors want to develop the product, raise money,
consult experts, and do some market research before they invest ti me
and money into ling patent applications. Accordingly, being careful
of how disclosures are made is imperative. Certain act ivities can result
in the irreparable loss of patent rights, while other activities can be
reasonably safe if done correctly.
POTENTIAL LOSS OF PATENT RIGHTS
(U.S. AND FOREIG N)
Even aer some changes to the patent laws in 2013, inventors must gen-
erally le for a U.S. patent within one year of the rst public disclosure,
public use, or oer-for-sale of an invention. Otherwise, t he invention
is eectively dedicated to the public domain and anyone is free to use
it. On the other hand, in the vast majority of foreign jurisd ictions, all
patent rights are lost immediately upon a public disclosure, public use,
or oer-for-sale of an invention—even if such activity occurs in the
United States. As discussed in more detail in t he coming chapters, for-
eign patent protection is not recommended for the majority of compa-
nies, but this does not mean that foreign protection should be forfeited
in favor of the one-year grace period aorded by the United States.
Foreign protection may be important to potential investors or busi-
ness partners in the f uture, and having the option for foreign pro-
tection may make the dierence between closing a deal or not. For
example, while a small sta rtup may not initially have sucient capital
to support foreign patent lings, a venture capital rm or acquiring
company may be able to provide sucient capital and may also have
market penetration in foreign jurisdictions that would justi fy building
a foreign patent por tfolio. Prematurely giving up the op tion for foreign
patent protection is therefore an unwise decision for even the smallest
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