By Damon Kali
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October 19, 2020
Getting your invention to market is a long process full of pitfalls for the unwary. Every step of the way requires thoughtful action or inaction as the case may be. In this post, I'll take a look at some of the things that trip people up when trying to get a patent. The phrase, "Bars to Patenting," sounds like a Spring break mantra used as an excuse to get busy drinking, but actually refers to actions or inactions that prohibit a person from getting a U.S. Non-Provisional Patent. What follows is a non-exhaustive list of things to do... or not to do to preserve your right to file a patent application. I'll divide the list into actions and inactions. Let's get started! Actions Offering to Sell the Invention : There are two keys here. One is that the offer to sell must be an offer to sell the invention. This is not to be confused with offering to license the invention. See below for clarification. The second key is that this action comes with a one-year timer - a bar date. That is, after you offer to sell the invention, you have one-year to file an application on the corresponding invention. Let's say you are in your garage working on your invention and your nosey neighbor walks in to say hello. Nosey neighbor asks what you're working on and you explain your incredible idea. When you're done, you say, "Would you like to buy one when I've got it done?" That's an offer to sell. Often times, an offer to sell comes when actively pitching your invention, but it can be relatively informal as well. You might counter that this was not an actual offer to sell, but just talk and no intention to actually sell was made. That's the way lawyers think and you should proceed very cautiously. Selling the Invention: The same keys as an offer to sell are applicable here. The sale must be of the invention and the sale triggers the one-year timer. Remember, the sale need not be between businesses or even invoiced. You may sell your invention at your local farmer's market or even at your neighborhood yard sale. Both count a sale. Tick tock. Publishing the Invention: Publishing means making the invention public. How public? Well, one inventor had a master's thesis describing his invention that was referenced in one library's card catalog where the thesis was stored. That library was not the Library of Congress, but a small college library in the middle of nowhere. If you're from that place, you have my sincere apologies for that remark. The important take home lesson is that the availability of that thesis, however obscure, counted as a publication for purposes of barring the patent. Don't throw your invention up on YouTube and expect it won't be counted as a publication. Importantly, this action comes with two timers. The first is the one-year to file timer once a publication has been made. The second is the absolute bar to a PCT application with publication. For the second, that means that the moment you publish your invention, if you do not have a priority application in place, you lose your ability to file a PCT application. I'll discuss PCT applications in another blog post. Here's another important point - it doesn't matter who publishes the invention. Let's get back to nosey neighbor. Later in the day, when nosey neighbor is thinking about your invention, nosey neighbor decides to help you out by posting a vlog on Vimeo extolling your brilliance and the virtues of your invention. Oops. That counts as a publication. Here's an even more obscure example. Let's say you draw up a sell sheet, but are not satisfied with how it turned out. The sell sheet explains the invention and how it works. You toss the sell sheet into the trash. The next day, which happens to be trash day, the trash man tips your trash can over in the street spilling your trash that includes your sell sheet. As fate would have it, a gust of wind grabs your sell sheet and carries it two blocks away where it alights on the windshield of a traveling salesman who is captivated by the idea and, in his search for the inventor, posts a the sell sheet on Craig's List to try and find you. Oops. Publication. Be careful. Inactions Failure to File an Application within a Specified Time Frame : If you've read this far, you know you have a one-year time frame to file and, in some cases, must file before the action has taken place. These timers are inviolable and cannot be recovered. However, if you find yourself in the predicament of having missed a bar date, there are some remedial steps that may be taken. For example, you may have significant improvements that may be patentable and are not subject to the actions described above. At this point, competent legal counsel is the way to go. Failure to File an Application at All : It seems axiomatic that if you don't file an Application then you will be barred from getting a patent. OK. I get that. However, something to consider is that the U.S. is a first to file jurisdiction. If you don't file your application and someone else files an invention the same or significantly similar to yours that they developed independently, then you will likely lose the rights in your invention. It's a bit more nuanced than that, but we're establishing general rules here not attempting to make patent attorneys out of the reader. The important thing is that if you don't file, you don't get to complain if someone else does and makes a gazillion bucks. Allowed Activities Offer to License under NDA : In contrast to offering to sell the invention, offering to license is a different beast. First of all, licensing is not selling the invention, rather, it is selling the right to exploit the invention. Second, this is a statutory carveout. That means, Congress says so, so it's OK. The same publication rules apply as above, so be careful with copies of your sell sheet or other marketing/pitching materials. Disclosure under NDA : This doesn't avoid publication pitfalls discussed above, but it does give you some recourse to go after the person to whom you disclosed your invention if they should intentionally or inadvertently publish your invention. An NDA is a contract and your remedy will be in contract, not intellectual property, so keep that in mind. Refiling a PPA : I'm often asked if an inventor can refile a PPA. The answer is unequivocally, Yes, BUT. The "but" part is the part that I like best because it means my professional career is secure. You can refile a PPA. But the question is will that PPA be valid. Generally, you file a PPA, then one-year later you file an NPA claiming priority to the PPA. If you don't do that, you lose the priority date. That's the typical case. However, what happens if you file a PPA and do nothing. Then two-years later, having no bar dates, you file a PPA again. Valid? Yes. You've lost your original priority date, but you have a new one that is perfectly fine. What happens if you file the PPA, then publish? Then the one-year timer kicks in and you will lose your ability to patent forever if you don't file an NPA either within PPA time period or the one-year time period. Whew. One more example. What if, using the previous example, you don't file the NPA within the time period and you've lost your right to patent - Can you refile the PPA? Yes, you can. But it will not be valid and you cannot represent that you have a valid PPA. If you do, that's fraud and that's no good. I think that' s enough for now. Remember, your actions or inactions can significantly impact your future patenting prospects. Keep Inventing and Stay Safe!