With so much time and money invested in each new product, there is always a sense of urgency to get it to the marketplace as soon as possible.
But there are dangers involved when the marketing team starts launching a product before the development team is fully ready.
“If you make an offer for sale on a product that would contain an invention, it starts a one-year clock,” says Stephen Lesavich, a patent attorney with the Chicago office of McDonnell Boehnen Hulberg & Berghoff. “Within that year, you have to file for your patent or else you will be barred from doing so.”
This same time constraint applies if you make a publication that includes details of your invention. If someone could look at this information and make their own device, then you’ve gone too far and the one-year time period is in effect. This is especially dangerous for software companies that might prerelease a flow chart that illustrates how its software will solve a particular problem.
The Supreme Court recently ruled this would be enough information for another software company to learn how to solve the problem, so the “onsale bar” was in effect.
“If you send out pictures of your device in a brochure that someone could copy, then you are in danger of creating an onsale bar,” says Lesavich. “People in the company have to be aware of what their inventors are doing when the products are being marketed. You may not be finished with a product when your time limit runs out, and that’s not a situation you want to be in.”
The safest route is file for applicable patents as soon as possible — which is why products are labeled with the “patent pending” label. Lesavich also suggests that anyone who sees the product be required to sign a nondisclosure agreement.
For those planning on selling overseas, different rules apply.
“If a company or organization desires to file outside the U.S., the one-year grace period doesn’t apply,” says Lesavich.