Top 5 Ways to Blow Your Startup's Possible Patent Protection

9552349038_639f98d020_z.jpg

By Heather N. Shafer (Intellectual Property Attorney, Independent) The surprised and dejected look on clients’ faces when we tell them their invention is no longer eligible for patent protection is not one a patent attorney likes to experience. The look morphs between a huge exhale to fuming red face with fists pounding the table and screams of “This can not be so, you must be wrong!” Each time I see this, I want to rent a blimp and have it travel the skies streaming information about the Top Five Ways to Blow Possible Patent Protection.

Since I cannot afford a blimp, here it is, plain and simple.

The Top Five Ways to Blow Patent Protection:

Not knowing that U.S. and foreign patent systems have “statutory bars” to patenting.

A “statutory bar” is a rule that says – if your invention is already “public” you cannot have a patent for it. In the U.S., if the invention is public for one year before you file your patent application –- your invention is disqualified from patent protection. In many countries, the very minute that your invention becomes public -– your invention is disqualified. The next few points illuminate the nature of “public.”

Before filing a patent application -– publishing a journal article, magazine article, or giving a talk at a conference.

Academic inventors and companies both make this mistake. They publish details about their invention in an academic or trade journal before filing a patent application. Prior publications that predate the application by more than one year destroy novelty and render the invention unpatentable in the U.S. In many foreign countries, the inventor loses patent rights immediately, the moment the article is published or the invention is discussed or demonstrated at a public event. It doesn’t even matter if no one read the article or if not a soul showed up to your talk!

Before filing a patent application – offering to sell the invention to someone.

Offering to sell the invention before filing a patent application is a common mistake. Inventors need money to get their invention off the ground, and they may try to find someone to “buy the idea” or they may make a few models and sell them on eBay to test the market. Once you have offered to sell the invention, you have one year to file a patent application in the U.S. In many foreign countries, you immediately lose the right to file.

Before filing a patent application – publicly using the invention.

When you have invented a cool new device, of course you want to show it off, but the minute you pull it out during a house party, show it at your aunt’s wedding, send it to class with your kid for show and tell, or make a YouTube infomercial –- the clock starts ticking. One year to file a U.S. application. Many foreign countries -– rights lost immediately!

Before filing the patent application -– advertising and launching the product on the Internet.

This category is redundant, but too many times patentability is blown when the patent examiners find material on a company’s website that predates the filing date by more than one year. If you haven’t filed a patent application, you should NOT launch your invention online. You should not post pictures of it (if it is tangible), or descriptions of it, or video demos, or articles about it; you should not blog about it (in any descriptive manner); take pre-orders; or anything else that publicly exposes your invention. If you are launching a beta web application, you should first talk to your patent attorney about how to ensure you do not destroy novelty.

At the end of the day, some people do “do it right.” Recently, I went to visit one of our new clients. The clients are a family start up, a mother, father, and son who invented a novel device. The device is over 5 feet tall when fully assembled. The family worked on the device in their basement, and each night they completely disassembled it, put it in a brown box, and stored it under their bed. They didn’t tell a soul – they didn’t even show it to their daughter who lived across the street! They read somewhere (thank goodness) that public disclosure was a bar to patentability. Once the patent was on file, they threw a huge party – invited the whole neighborhood – and got lots of great YouTube footage.

As much as we hate to see the sadness when our clients do it wrong, we love the joy when they do it right. If you have an invention you want to build a future on, file your patent before you tell people about it, use it outside, sell it, offer to sell it, or publish it anywhere

If you have an invention you want to build a future on, file your patent before you tell people about it, use it outside, sell it, offer to sell it, or publish it anywhere.

This post was originally posted at IP Law for Startups.

Editor's note: Got a question for our guest blogger? Leave a message in the comments below. About the guest blogger: Heather N. Schafer is an independent intellectual property attorney with more than five years of experience in protecting, enforcing and licensing intellectual property rights. Heather started her practice in Chicago Illinois at Brinks Hofer Gilson & Lione, one of the largest intellectual property firms in the country, Brinks Hofer Gilson & Lione. Heather is a registered patent lawyer and counsels companies regarding strategic protection of their intellectual property including trade secrets, patents, copyrights, and trademarks.She blogs at IP Law for Startups.