The following are several basic steps one should take in order to preserve patent rights:
- Seeking assistance of competent legal counsel;
- Forming an effective patent strategy, and
- Increasing IP awareness and intelligence of the company.
In addition, companies and individual inventors should be always aware of the following points and make a habit of practicing the best advice in order to preserve patent rights and avoid pitfalls:
(i) Think twice before you tell others of your invention. This may very well be the number one cause for losing patent rights. In many countries, the moment you make your invention public, you lose any rights to apply for a patent, unless a patent has already been applied for based on the invention. In the US, the situation is slightly different but still very strict. The US has a one-year grace period after making a public disclosure of an invention. Specifically, once the invention is disclosed, you must file an application for patent within one year, or you lose the right for patent protection. In order to preserve broader patent rights that include foreign countries as well as US, it is good practice not to rely on the one-year grace as the first choice. Instead, always file a patent application before making any public disclosure of an invention. If a public disclosure has already been made, a US patent application must be filed within the one-year period.
Exactly what constitutes a public disclosure of the invention is a rather complicated legal question, but it is advisable to always remain on a safer side by not telling others anything about the invention. Committing a public disclosure doesn’t require that you go in an open space to make a loud announcement to everyone about the invention. Under certain circumstances, a disclosure to just a single person could constitute a public disclosure. The more you tell others about the invention, the greater danger there is. As a rule of thumb, if what you have divulged is enough for someone of ordinary skill in the art (the technical field of the invention) to readily understand your invention, you have made a disclosure of the invention. Even if you haven’t disclosed the entire invention, you may have lost a part of the invention to the extent that it has been disclosed.
A discussion about an invention with someone under explicit or implied secrecy is not a public disclosure and will not put the invention in jeopardy. For example, an inventor can discuss with a co-worker about an invention without fearing that a public disclosure has been made, as long as the discussion is understood to be work related and confidential. If an outsider (even if it is a relative of yours) is present, it is absolutely necessary to either not discuss about the invention or, if you have to discuss about it, make it explicit (in writing if possible) that the discussion is under secrecy.
(ii) Think twice before you demonstrate or use your invention in public. Like public disclosure, any public use of an invention may also trigger the one-year period. Although experimental use is not considered public use in US patent law, caution is always advised.
(iii) Think twice before you try to sell your invention. Like public disclosure and public use, a commercial sale or an offer for commercial sale of the invention may also trigger the one-year grace period. What constitutes a commercial sale or an offer for commercial sale is again a quite complicated legal question (to an extent that it required a recent US Supreme Court case to decide this question). This article does not attempt to explain this issue in detail. It is however important to remember that if you have made a definite offer to sell a product that embodies an invention, the on-sale bar is triggered even if you did not tell the buyer the nature of the invention. Many people who have a rudimentary understanding of patent law often reason that if the sale activities do not constitute a public disclosure of the invention, you would be safe. This is incorrect. The on-sale bar is not an example of public disclosure bar. Rather, it is a separate legal bar that is used for preventing inventors from unjustifiably exploiting his invention beyond what the patent terms may permit.
Although a gray area, under certain circumstances even an offer for licensing the invention or a discussion with a potential investor to attract investment may trigger the on-sale bar. It is possible to have licensing or investment related discussions or negotiations with another party without triggering the on-sale bar, but extreme caution must be taken before you step into this uncertain terrain. If you have to do so, it is important that you consult with an attorney versed in patent law.
(iv) Keep clear written records of inventions. Written records make the best evidence for proving an invention date. If you feel the idea is important enough, sign the record with presence of a witness. (The witness should be under either implied or explicit secrecy agreement.) In the fast pace of today’s invention making, it is often a matter of a few months or even days to decide who has made an invention first. In the US, although the person who files a patent application first has the advantage of a prima facie invention date, it is ultimately a question of who has made the invention first. Whenever a dispute arises, the one who has a better proof of an earlier invention date prevails.
(v) File patent applications as early as possible. If unsure whether it is worth the effort or money to file a regular patent application, file a provisional US patent application which has a minimal cost. A provisional patent application, although does not confer any patent rights in itself, establishes a priority date and gives one year for the applicant to decide whether a nonprovisional (i.e., regular) patent application should be pursued eventually.
