Protect Your Intellectual Property Before It’s Too

Patent reform is a hot topic in intellectual property law these days. The America Invents Act was recently passed into law and the provisions of this legislation have been going into effect over the last several months. Arguably one of the biggest changes encompassed in this sweeping reform bill is the change from a “first to invent” system to a “first to file” system.

Before the new law went into effect in March 2013, the first person to invent something could obtain a patent on the device even if somebody else filed for the patent first. To illustrate, imagine Ann has a great idea and is tinkering away in her basement perfecting her invention. Two years later, Bill has the same great idea and rushes to the patent office and files his patent application right away. Eventually, Ann is satisfied with her invention and files a patent application after Bill. Under the old laws, Ann is still entitled to own the patent even though Bill filed for it first. But under the new laws, the patent rightfully belongs to Bill because he filed before Ann.

What is important to note is that in both cases the person who is entitled to own the patent is a true inventor of the device. Ann and Bill both invented the device independently. Imagine instead that Ann had a great idea and told Chuck about it. Chuck does not invent anything, but he takes Ann’s idea and files a patent application in the patent office before Ann could prepare and file her own application. Under neither the old laws nor the new laws may Chuck be the valid patent owner. This is because Chuck is not the true inventor; he merely stole the idea from Ann and is not entitled to patent protection. So while patent reform does change the United States to a first to file system, the requirement that you actually invent the device still remains.

Other Factors in Play

However, getting to the patent office first is not the only thing that must be done to obtain a valid patent. There are also some activities that must be avoided if you hope to obtain patent protection.

Public use or disclosure of an invention prior to 12 months before filing a patent application can prevent the inventor from obtaining an enforceable patent. This is one of the reasons that getting a non-disclosure agreement (NDA) in place is so important. NDAs specify that the information you are sharing with others is sensitive and not available for public consumption. Generally, if details of an invention are subject to the provisions of an NDA, the invention has not been publicly disclosed. And disclosures made under the protection of an NDA do not start the 12-month deadline in which to file a patent application. Conversely, telling a friend about your great idea without an NDA in place will trigger the 12-month deadline.

Another activity that requires a patent to be applied for within 12 months is an offer for sale. Once you offer to sell your invention to somebody, even if no sale takes place, you have only 12 months to obtain valid patent protection. If patent protection is not obtained within the 12 months after offering to sell your invention, you forever give up your ability to obtain a patent.

Meeting the Conditions

Generally, to obtain a valid patent, you must be the inventor, must be the first to file the patent application, cannot have publicly used or disclosed the device more than one year before filing the patent application, and cannot have offered the device for sale more than one year before filing the patent application. This can be a lot to remember when in the midst of creating a new product, but there are two guiding principles that can direct your actions when obtaining a patent. First, do not create unnecessary delays in filing your patent application. Second, before filing your patent application, do not talk about your invention with anybody unless you have a non-disclosure agreement in place.

Patents carry with them a bundle of powerful rights. Be diligent in protecting these rights and take steps to avoid accidentally giving them away forever.

Kelly G. Swartz is an attorney with Ingenuity Law, a Melbourne, FL law firm focusing on Intellectual Property matters including patent, trademark, copyright, and trade secret law. She can be contacted at Kelly@IngenuityLaw.com