Can an Inventor Sell or Publicly Use an Invention Before Filing a Patent Application?

Short Answer

Possibly for up to one year, but it’s not a great idea.

Fact Pattern

Our inventor has a great new device. The inventor is thinking about patent protection, but it’s expensive to apply. In addition, the inventor isn’t totally sure what others will think of the idea. Bursting with curiosity, the inventor will be tempted to give a few devices away. If market interest is there, the inventor may then want to sell a few devices to help pay for the cost of the patent application.

Statutory Rule

Under U.S. statutory law (35 U.S.C. 102), sale of the invention or public use of the invention more than one year before filing the patent application is an absolute bar to patentability. The United States Patent and Trademark Office will not allow a patent application to issue if the invention was sold or used publicly before the one-year date. There may be an argument for experimental use, but this route is highly risky and beyond the scope of this blog post.

Case Law

Consider Lough v. Brunswick decided by the Federal Circuit in 1996. Lough was a repairman for a boat dealership in Florida. He noticed that an upper seal assembly of a Stern drive for inboard/outboard motors failed often due to corrosion. On his own time, he used his metal lathe to create a new upper seal assembly that was corrosion resistant. Corrosion resistance takes a long time to observe. Therefore, he gave several prototypes away to friends.

The court reasoned that public use includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor. The court held that Lough publicly used the seal assemblies by providing them to friends, because the friends were not under a limitation, restriction, or obligation of secrecy. Furthermore, the Court held Lough’s patent invalid, because his public use was more than one year before filing. Lough missed out on $1.5 million.

Analysis

Based on Lough’s example, our hypothetical inventor does not want to lose his patent rights. Therefore, he should make sure to file the patent application before one year passes after sale or public use of the invention. However, the inventor should ideally file before public use or sale itself. This helps eliminate ambiguity and can remove an issue before the court. Furthermore, some foreign countries have “absolute novelty” requirements that completely bar a patent for any public use or prior sales. Therefore, if the inventor may want foreign protection in an absolute novelty country later, best practice is to file the patent application before public use or sale.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Design Trademark or Standard Character Trademark: Which is Broader Protection for Your Business Name or Product?

We’ve previously mentioned that you may protect the goodwill built into your business name or your product names through trademarks. This goodwill encompasses the learned customer expectation related to your business. Federal registration of your trademark can put the entire country on notice of your rights in your trademark. Furthermore, the United States Patent and Trademark Office (USPTO) will not issue a trademark that’s deemed too similar to an existing mark. Therefore, filing first can give you a leg up in the trademark land rush.

Consider a company that has a logo that includes both a word and a design. It’s possible to receive trademark protection on both the word and design. However, the USPTO requires designation of a trademark application as either a word mark or a design mark, among other more exotic options. An application cannot be designated for both design and word mark protection.

How should the company choose the broadest protection?

The common knee-jerk answer is that the word mark is broader, as the background design isn’t required for infringement. However, the true answer isn’t exactly straightforward. Imagine the trademark for Hot Wheels, which include both the words “Hot Wheels” and a stylized swooping flame.

If the word trademark is filed alone, trademark protection may prevent others from filing or using the words “Hot Wheels.” Changing the background design of the stylized logo does not avoid infringement. Therefore, the word trademark alone may not prevent others from using the stylized flame with different words, such as “Smokin’ Ride.”

On the other hand, companies that use the swooping flame may infringe a corresponding design trademark, even with different words. Note that companies may avoid infringement by changing color, if color is claimed in the mark.

Therefore, the broadest protection requires obtaining both a word trademark and a separate design trademark.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Can an Inventor Apply for Foreign Patent Protection after Filing a U.S. Patent Application?

The background situation is this: your company has a U.S. patent application on file and development in the U.S. market is going great. Based on your domestic market success, you want to expand the territorial reach of your patent portfolio to foreign countries as well.

Many foreign countries, such as China, have an absolute novelty requirement for filing a patent application in that country. This can give rise to issues when the U.S. application has already been filed. In addition, many companies begin advertising the new invention as soon as patent pending status is reached upon filing. Rightfully so, because “patent pending” can be a great marketing tool. However, foreign filings can be prevented from issuing due to both the prior U.S. filing and the public disclosures in the advertisements occurring before the foreign filing.

How can the company try for patent protection into these foreign countries?

Thankfully, several countries allow a time period for claiming priority back to a U.S. patent application. For example, China specifically allows a claim of priority back to a U.S. utility application for up to 12 months after filing the application. Note that this time period is only six months for a design patent application.

Alternatively, the company can submit a Patent Cooperation Treaty (PCT) application within 12 months of filing the U.S. utility application. Although this creates an additional filing with associated costs, the PCT allows for 30 months from the filing date of the first application in the chain (i.e. the priority date) to enter the national stage for most countries. The additional time generated is often about 18 months from filing the PCT. During this time, the company can evaluate foreign markets for viability or begin market testing of the new product.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Squeezing Maximum Protection When Your Invention Depends on Shape

We previously left off with two options for patenting shape change inventions. For example, shape changes may be patented with utility-level protection for functional structures of the shape change or with design-level protection for aesthetic structures of the shape change. However, for companies that want maximum protection of both the function and aesthetics of the shape change, it is recommended to file both types of applications. Furthermore, companies may want to hedge their bets with aesthetic protection as a backup, in the event that utility protection doesn’t pan out.

Note that a patent application is reviewed by an examiner and often meets an initial rejection. The examiner will consider arguments in response to this initial rejection. These initial rejections, when dealing with inventions claiming shape changes, often argue that the claims are drawn to a “mere shape change,” with nothing more. Examiners typically won’t allow patents on mere shape changes, because such alterations in arrangement are typically considered obvious variants of pre-existing products. These arguments may be overcome by pointing out the functional aspects or benefits of the claimed arrangement.

Furthermore, consider that a patent examiner will not allow a design patent to protect functional aspects in a design. Therefore, the inventor may have to argue that the structure is merely aesthetic. As such, filing the utility patent application on a shape change seems to claims that the shape change is functional, whereas filing the design patent application seems to claim that the shape change is aesthetic. These interests seem diametrically opposed.

To throw another wrench in the works, arguments made in one application can hamper the patentability of related applications, when the arguments include statements that affect patentability (such as whether a structure is functional or aesthetic).

How should an inventor proceed with applying for both utility and design patent protection to avoid losing protection for both?

The description of the invention in the utility application must be worded very carefully. For example, all functional language should be permissive – using the words “may be” rather than “is.” Additionally, the description and any arguments in response to the examiner should be drawn to aspects of the structure rather than the entire structure itself. As a further example, a structure has a surface that can contain ornamentation, whereas the structure itself may be functional. Even better, aspects of the shape change may be functional and yet other arrangements may exist for the function, making the particular shape in the design patent application an aesthetic choice.

Applications for both utility and design patents on a shape change are possible, when a high degree of creativity is used to describe the various aspects of the invention.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Can I patent a new shape of an existing product?

There are two main options to explore for patent protection on the shape of an object: a utility patent application or a design patent application.

Utility Patent Application

As we’ve discussed in a previous blog post, a non-provisional utility patent application has claims that may issue into a patent on your invention. We’ll skip over the provisional utility application, because it’s usually a description without claims.

Whenever a utility patent application relies on change in shape, I tend to expect an initial rejection from the patent examiner at the USPTO. For example, the examiner usually cites In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).

The patent attorney shorthand analysis is that a mere shape change is a design choice. The qualifier “mere” means that there is a shape change with nothing more regarding patentability. This type of rejection can often be overcome by showing that the shape change has a functional benefit so that the examiner will consider the claimed shape as a structural element of the invention.

Design Patent Application

Rather than protecting the way your invention is used and works (the functional features), a design patent protects the way an article looks (the ornamental features). The protectable appearance can include the invention’s shape and configuration and/or surface ornamentation. A simplified way of thinking about what is protected is by imagining a shadow cast by the item you have created. The ornamental shape of the shadow may be protectable by design patent.

Imagine that you obtain a design patent for a new and useful tool – only the ornamental design would be protected! Thus, you could only stop your competitors from using your design, whereas these companies are free create a new design for the functional aspects of your invention.

Utility or Design

In light of these issues, a utility application is most often chosen for protection of functional structures. However, a design application can be used if the design itself is the intended invention. The third option is to file both – if the invention may be a mere shape change in the eyes of an examiner reviewing a utility application, you may still have a protected design. When filing both applications together, other issues can arise that may prevent grant of either type of patent. These issues will be discussed in an upcoming post soon!

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Does my Patent Prevent People from Making My Product in China?

I’ve heard some variant of this question a few times now. Typically, the company wants to manufacture the patented product overseas. Currently, China is a popular choice due to the technological capabilities of Chinese companies, yet affordable production costs. Unfortunately, these companies, as a whole, have developed a reputation among many U.S. inventors for continuing to sell products outside the contract. Inventors and U.S. companies are then stretching for some sort of protection in China.

The first thought seems to be that patent rights should protect the invention, because the invention is recognized as patentable. However, there is a wrinkle in this logic – the grant of a patent is a sovereign governmental act. Therefore, the grant of a patent in typically limited to the territory of the government that granted that patent. For example, a U.S. patent only protects against infringement in the U.S., whereas the rest of the world is fair game. (There are a few treaties that establish processes for achieving recognition of patentability across several countries, such as the European Union, but patent grant fees and maintenance fees are still paid for each individual country).

What ways can an inventor prevent copying by the foreign manufacturer?

One option is through contracts and trade secret protection. It is highly recommended to seek counsel when trying this method, because Chinese contracts require special formalities for enforceability. For example, most U.S. companies have never had to deal with a “chop” to make the contract binding. Additionally, trade secret protection requires measures to keep the information a secret. Policing these security measures in China can be very expensive from the U.S.

Another option, which requires a bit of foresight, is to file a patent application in China at the same time as the U.S. patent, or to file a Chinese patent application that claims priority to a U.S. patent application. There are strict time limits and formalities with this process and the inventor is limited to the U.S. and China. For a broader reach, the inventor could file a Patent Cooperation Treaty application within 12 months of the U.S. priority date in order to obtain 30 months (from the priority date) to decide on other countries in which to pursue patent protection.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

What’s in a Name? Protecting Your Goodwill through Trademarks

Unfortunately, not all ideas are patentable. A full analysis is well beyond the scope of this blog post, so we’ll use an example instead. Consider a new retail concept, such as a frozen yogurt shop. The owner may want protection and some sort of exclusivity in the business. However, the owner does not have any novel recipes or any new inventive manufacturing processes.

Without an invention for patent protection, can the owner protect his business?

Absolutely! The owner can protect, among other things, his goodwill built into his business name through trademark (subject to anyone’s trademark that already exists). Goodwill is a complicated legal term that we can also break down into a real-world example.

McDonald’s is a well-known fast food restaurant. When you go to McDonald’s, you expect a certain quality and speed of service and a certain quality of food. This consumer knowledge and expectation is the goodwill built into the business name. McDonald’s also has a trademark on the name “McDonald’s” in the fast food industry to protect this goodwill. Trademark protection deters other business owners from setting up shop under the McDonald’s name without approval. In turn, the trademark owner can police quality and consumer expectations related to the trademark.

How can the frozen yogurt shop owner go about protecting his business name with trademarks?

The simple answer is to file a trademark application with the United States Patent and Trademark Office. In fact, the business owner can file while setting the business up. All that is required is a bona fide intent to use the mark in commerce. Then, the business owner can file proof of actual use at a later date. Alternatively, the business owner can file proof of actual use up front, as long as the submission matches the goods or services described under the trademark.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Patent Protection Myth: If I sent myself a letter proving I thought of it first, do I have patent protection for my invention?

Short answer: No! You must file for patent protection to secure patent pending status and possible patent protection, if the patent office grants a patent.

Many inventors follow this procedure: describe their invention in a letter, mail the description to themselves for an official date evidence by the postal service, and keep the unopened envelope as proof of the date of invention.

At initial consultation, these inventors believe they have secured proof of being the first to discover their invention. Whether or not this is true, this method provides no patent protection under the current law. However, this myth has become entrenched in “common knowledge” through years of misinterpretation of old law.

In fact, the U.S. patent system used to be a “first to invent” system in which a person could use extrinsic evidence, such as dated lab notebooks, dated letter, etc., to help prove their inventorship status, even if another person had filed a patent application previously. Under this standard, a person could create an invention and the date of “reduction to practice” (e.g. when it was capable of being made and used) was the protection date if all diligence was followed to file a patent application within the proper time period.

Many large companies file in the U.S. and also internationally. Most foreign countries have “first to file” rather than a “first to invent” patent systems. Furthermore, many countries try to work together to accord rights to inventors according to the inventor’s home country when filing in the foreign country. One method for foreign filing is through the Patent Cooperation Treaty (PCT) procedure. However, reconciling patent rights between “first to file” and “first to invent” countries can be difficult and may cause an uneven playing field.

As a result, the U.S. became a “first to file” system on March 16, 2013. Since then, generally the first inventor to file a patent application secures rights in the invention against later filers. Therefore, no amount of proof of the date of invention, including a self-addressed mailed letter describing the invention, will protect an inventor against someone that files their patent application first.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Taking a Peek at Your Future Patent: Patentability Search and Opinion

I get a recurring question among new inventors – how do I know if I’ll get a patent after going through the time and expense of filing a patent application? This is a valid concern, because the United States Patent and Trademark Office (USPTO) will not issue a patent if the claimed invention is identically described in a publication or other public disclosure. Additionally, the claimed invention cannot be an obvious variant of something publicly disclosed that already exists.

To answer the question, it’s possible to get a feel for the scope of an invention that could be protected during a patentability search. The patentability search involves checking the records at the USPTO for published patent applications and issued patents. Most of the time, different features of an invention are published in several publications. In these instances, the broadest aspect of an invention may not be available, but narrower features that are previously undisclosed may be protectable.

As an hypothetical, consider the Dyson Airblade hand dryer. A patentability search at the time this was invented would have revealed hand dryers generally. However, the publications found may not have included the shaped nozzle that generates the airblade that quickly pulls water off of your hands. In this instance, the search would have revealed that a patent application should not claim all hand dryers, but should be more narrowly tailored to the specific structures of the airblade itself. This patent would still have value, because other hand dryer manufacturers could be excluded from using the airblade structures, even though they can continue making the older hand dryers.

Based on the published features found in the search and the scope of protection available, you can then decide whether to pursue patent protection. Your attorney can also use this information to craft claims specifically tailored to the protection available. This can result in fewer rejections from the USPTO before obtaining an issued patent.

However, there are a few drawbacks to a patentability opinion, but they are small compared to the benefits. A patentability search will not reveal unpublished patent applications. Generally, a patent application will not be published until 18 months after the filing date, unless early publication was requested or the patent issued before the publication date.

Additionally, there is an affirmative duty to submit publications that are “material to patentability” when filing a patent application. To be safe, I like to submit the publications that are reported in the patentability opinion when proceeding to file a patent application. This isn’t usually a problem during prosecution, because other features were not found in the references.

If you need help searching the USPTO databases for your invention or if you need an opinion on whether your invention is different, contact me.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Save the Date for Patentability: A Case in Favor of Provisional Filings

As previously discussed, a provisional application will never issue into a patent without filing a non-provisional within a year. However, the provisional application can have its uses. For example, consider that public disclosure of an invention creates an absolute bar to patentability in the United States, if a patent application is not filed within one year of the disclosure. In fact, some foreign countries cut off rights to a patent immediately upon public disclosure before filing. Why, then, would an inventor go with a provisional filing?

The first scenario is speed. Many businesses participate in trade shows to put their ideas and product developments out into the community. This can show the innovative nature of the company and draw pre-orders for new products. However, an invention may be stolen by others after these product presentations. A provisional filing only includes a description of the invention with the technical requirement of patent claims. Therefore, a provisional filing can be prepared and filed when an invention is developed and will be pitched at an upcoming trade show.

The second scenario is cost. Some product developments may involve a limited budget where the goal is to determine market interest before pumping cash into the project. In light of the public disclosure bars, the low-cost provisional filing may allow up to a year for customer surveys, trade shows, and market development to gauge interest before diving full bore into a non-provisional application.

However, a non-provisional application is recommended if time and budget permit. This route allows saving long-term costs for one filing rather than two. Furthermore, the provisional only allows priority for material that is described. Therefore, the additional technical requirements of the non-provisional may help develop aspects of the invention for a more complete description.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law