Error #1 – Companies believe their new product doesn’t infringe on someone else’s patent

The first potentially fatal error is to release a product, patented or not, into the stream of commerce without first determining whether the product comes within the scope of another’s intellectual property (IP) rights. Remember, filing an application for a patent, and even obtaining a patent, does not give you permission to move forward with anything. Rather, obtaining a patent provides a right to exclude others from making, using, or selling the invention. Therefore, it is possible there are patents on inventions similar to your invention that could potentially present infringement problems, even if your invention is patentable. If one of your competitors has an issued patent within which your invention is contained, even if not explicitly named, then you have at least a potential infringement concern. This is important because in some instances, liability for infringement can cause a SME to shut its doors.

Error #2 – They engage in activities prior to filing a patent application that render the invention unpatentable

Take steps to consider whether your invention is potentially patentable. To be patentable, an invention must be novel and nonobvious over the prior art. (Prior art is defined by statute and can include your own publications and activities.) As a preliminary matter, to avoid refusal of a patent based on the novelty of the invention, applications for patent must be filed in the United States within one year of the first public disclosure or offer to sell the invention. The United States has a “relative novelty” standard and provides a one-year grace period to file the application after you make your invention publicly available or offer the invention for sale. Public use potentially can be established if the invention was disclosed to even one person without restriction, so you should advise your lawyer of your activities more than one year before any patent application is filed. The grace period for your activities does not apply to the activities of another, independent inventor. If another inventor makes the same invention as you and discloses it before you file your patent application, that disclosure will constitute a statutory bar and your invention will no longer be patentable.

This standard is different in countries other than the United States: there is no grace period. The application must be filed prior to any pubic availability of the invention, period. Europe, for example, has a requirement of “absolute novelty” for patents, and there is no grace period after public availability of the invention. However, for most countries, you will be able to claim the filing date of your first filed application as the priority date for filing, where the later applications are filed within one year of the priority application. As an example, if a US company decided to go international with their product, they could retain their original, US filing date for foreign applications.

Error #3 – They fail to search the invention and obtain an opinion of patentability

It is important to have a patentability search completed and to obtain a legal opinion of patentability as soon as possible after you have decided to consider obtaining patent protection. The search and legal opinion enable the patent lawyer to frame the invention and to draft a patent application and claims to the invention, whether on a regular patent application or a provisional application. This is of importance because the United States, and most other countries, abide by first-to-file, meaning another independent inventor can file before you, obtain a patent on the invention, and keep you from patenting, making, using, or selling the invention.

A patentability search and opinion also inform the inventor whether the invention is patentable and of the scope of claims that may be allowable; therefore, enabling informed business decisions, typically for much less than the cost of preparing a patent application. Although one is not required to search, filing an application in the absence of a search and patentability opinion generally is not recommended, and can result in more costly, lengthy, and uncertain patent prosecution during examination. For small firms, understanding the scope of what is possible is a relatively modest investment.

At Pedigo Law, we’ve secured hundreds of patents in a wide variety of technologies and fields. Contact the legal experts at Pedigo Law Firm for a thorough approach to all your patent needs.

The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome your calls, letters, and email. Contacting the Firm does not create an attorney-client relationship. Please do not send any confidential information to the Firm until such time as an attorney-client relationship has been established. Many inventions are not patentable and many patented inventions are not successful in generating sales. Sales of patented products may be due to a variety of factors and success for one patent or license agreement should not be considered representative or typical of results you might expect based on a patent obtained or license written by this firm.  Example(s) will only be provided to demonstrate work product and with the client’s permission.