Losing your patent rights can be easier than you think
Why Talking to a Patent Lawyer Is One of the First Things an Inventor Should Do
Posted June 5th 2017
By: Bob Corbett, Corbett and Kreisher PLLC
(The following discussion is intended only as general information; it is not legal advice and should not be relied upon as such. You should review the facts of your particular situation with a patent attorney.)
In patent law, timing is important. There are several ways inexperienced entrepreneurs could lose patent rights without knowing it if they aren’t careful.
If you have an invention and want to pursue patent rights to prevent others from profiting from your invention and competing with you in the marketplace, you should talk to a patent attorney soon after you determine you have an invention.
Here are a few important guidelines to remember even before you have that conversation.
- It is important to know that an invention cannot be patented unless it is novel — and your activities can make the invention lose its novelty.
- Under U.S. patent law, an invention lacks novelty, and cannot be patented, if the invention was, among other things, “described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date” of the patent application.
If you are reading this and think you may have blown your chances for a patent, you could still be in luck, depending on who, when and how the information was disclosed.
The United States is generous in granting a one-year grace period for inventors to file an application if the disclosure was made by:
- The inventor;
- A joint inventor; or,
- Someone who obtained the subject matter directly or indirectly from the inventor or a joint inventor.
If any of these are the case, then you have must file a patent application within one year from when the disclosure takes place to preserve any patent rights you may have.
In many countries, there is no grace period and certain disclosures made prior to filing an application could prevent you from obtaining patent rights in other countries. If you are interested in applying for patents in other countries, you will want to file a U.S. application before disclosing the invention in a manner that could result in the loss of your foreign patent rights.
- If someone else independently comes up with your invention and files a patent application, describes it in a publication, uses it publicly, offers it for sale, or otherwise makes it available to the public before you file an application, you will not be able to obtain a U.S. patent on your invention. Filing an application sooner rather than later reduces the risk of that happening.
So, what’s the takeaway for entrepreneurs?
Discuss your situation with a patent attorney very early in the process. A patent attorney can work with you to assess your current situation and your future plans, and then create a strategy for preserving your rights. One option available to entrepreneurs is to file a provisional patent application, which can often be prepared and filed for significantly less cost and in less time than a non-provisional patent application. A provisional application provides an inventor with a filing date. Events that occur after the filing date cannot be used to reject an application. A regular non-provisional application must be filed within one year of the provisional application.
The inventor of the popular “fidget spinner” is just one recent example of the importance of taking precautions to preserve any patent rights you may have. Catherine Hettinger, inventor of the phenomenally successful product found in the hands of children and adults around the globe, reportedly gave up her patent rights due to the $400 price tag associated with maintaining her patent.
I am sometimes asked whether inventors can prepare a patent application themselves. I strongly recommend having someone specially trained in patent law prepare and file an application because an improperly prepared application may be completely ineffective in preserving your rights.
Working with an attorney and understanding a few of these guidelines can save you time, money and significant headaches down the road.
This is written by a member of the Central Michigan University Research Corporation community; however, the thoughts expressed in this blog post are the views of the writer, not necessarily CMURC.