Two Easy Ways To Lose Patent Protection

     The danger in this campaign is that it starts running a one-year clock. If the startup doesn’t file for patent protection on its tech-bracelet within that one-year period, it may actually lose out on being able to obtain patent protection. Anywhere in the world. Under US patent law, if the inventor fails to file a patent application (either provisional or non-provisional) within one year after making public disclosure of the invention, the disclosure becomes prior art, even against the original inventor. That’s inside the United States. Outside the US, the public disclosure immediately becomes prior art.Offering the tech-bracelet for sale can trigger the “on-sale bar.” An offer to sell the product anywhere in the world starts a one-year clock during which a patent application must be filed. After that one-year period expires, the offer for sale bars patent protection. The important aspect of this to understand is that a mere offer is enough, even if there is no actual sale or shipment of product. This applies to pre-sale orders and orders for prototypes, too.Another risk of disclosure comes from the nature of the US patent system, which is now a “first to file” system. If the disclosure is detailed enough, it could reveal too much of the unprotected intellectual property. Another inventor could take that intellectual property and file first, thereby defeating the original inventor.

The solution to this problem is fairly simple – file your patent application before making disclosures and offers to sell. Patent applications are not cheap; the legal expenses can run several thousands of dollars. That’s why startups may make the mistake of putting off filing the patent application until after the crowdfunding or other fundraising effort; the campaign is intended to raise the money needed for things like getting patent protection.

If a startup must make some disclosure of IP to raise capital, it has to do so carefully. It should at least invest some money up front in speaking with a patent attorney, so that they can develop an intelligent strategy for IP protection. The attorney can help in limiting the disclosure to the bare minimum. If the startup decides to go the crowdfunding route before filing the patent application, don’t offer pre-sales of the item in question. Sell promotional swag instead. And in both cases (disclosure and offers to sell), mark that calendar so you know when the one-year period expires.

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