Introduction
Patent strategy and launch strategy should be planned together. A website update, technical presentation, product offer or investor conversation can create facts that matter to patent rights. The consequences depend on what occurred, who disclosed it, when it occurred and where protection will be sought.
Key Takeaways
- Discuss planned disclosures and sales before they happen.
- U.S. exceptions are limited and do not create a universal safe window.
- A U.S. disclosure rule should not be assumed to preserve foreign rights.
Identify the relevant events
Prepare a timeline of publications, public demonstrations, offers for sale, sales and other commercial activity. Section 102 addresses several ways information or activity can qualify as prior art.
Certain inventor-originated disclosures may fall within U.S. statutory exceptions, but applying those exceptions is fact-specific. A confidential agreement does not automatically resolve every patent issue involving sales or offers.
Plan beyond the United States
Other countries may apply different disclosure and novelty rules. Filing after a public disclosure can jeopardize foreign protection even where a U.S. exception might apply.
International filing deadlines and priority claims also require planning. A domestic application does not itself protect an invention abroad. Discuss the jurisdictions that matter to manufacturing, sales and competitors.
Practical Implications
Before a trade show, public demo or launch, ask counsel to evaluate the invention and filing plan. Keep records of the content and recipients of past disclosures.
Use confidentiality agreements where appropriate, but do not treat them as a substitute for patent advice. If a disclosure has already occurred, provide the full facts promptly instead of assuming the opportunity is necessarily lost or necessarily safe.
Conclusion
Plan patent filings before disclosures and commercial events whenever possible. If an event has already occurred, a prompt, fact-specific assessment is more reliable than assuming rights are either preserved or lost.
Attorney Bio
Cary W. Brooks, Registered Patent Attorney
Founder of BrooksGroup. His experience includes patent prosecution and litigation, and 16 years as a patent attorney at General Motors.
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This article is provided for general informational purposes and does not constitute legal advice. Reading this article does not create an attorney-client relationship.