Developing and Launching Products Without Patent Applications
12th October 2012 · 0 Comments
Most start-ups find themselves faced with needing to use others to develop their technology (or the need to launch a product) while a patent application is unaffordable. These situations present dilemmas.
Under current U.S. law (patent reform will change things – stay tuned), publically disclosing a patentable idea (or offering products incorporating that idea for sale) triggers a one year deadline for filing a related application. In other countries, either action places the idea in the public domain immediately. However, entrepreneurs can avoid these penalties.
First, they should place all parties involved (including employees, vendors, alpha/beta testers, etc.) under NDAs. Secondly, they should mark all drawings, prototypes, specifications, etc. with proprietary warnings. Thirdly, they should get the other party(s) to verbally confirm that the entrepreneur considers the information involved to be proprietary – before making the disclosure. These actions usually remove a disclosure from the public-disclosure rule.
They should also plan their “offers” carefully. To fall within the offer-for-sale rule, the offer (not a consummated sale) must be legally binding (on the entrepreneur) and the idea must be ready for patenting (the entrepreneur must be able to describe how to make, use, and operate things incorporating the idea). Entrepreneurs should therefore compare their anticipated marketing, sales, and development efforts to determine when they expect to be able to describe the idea (as noted above) and when they expect to make their first legally binding offer.
Ideally, they should plan to file a patent application before 1) their first legally binding offer and 2) they can describe the idea well enough that others could make something incorporating the idea. Failing that, they should plan to commit to filing an application within the one year deadline (while knowingly foregoing much potential foreign patent protection).
Since you probably find yourself in a unique situation, we at the Villhard Patent Group would enjoy exploring your options with you. For more information about us, please see www.villhardpatents.com or call us at (512) 897-0399.