The Patent Trap
by Intellectual Property Attorney Bill Honaker, the IPGuy
Over three consecutive posts, I will discuss traps for patents, trademarks and copyrights.
IP rights have never been more valuable. A well-managed IP portfolio can be worth one third or more of the total value of your business. Unfortunately, most businesses treat IP as an afterthought. Even if you don’t, you can still lose valuable rights by falling into one of these traps.
A typical patent horror story
I recently had a disappointing call — one that I have all too often. The inventor excitedly told me about a great invention; then he said sales are huge; and then he said it had been on sale for more than a year. No IP lawyer ever wants to hear this. He blew it; he missed the filing deadline. Like the spiked pits in those old Tarzan movies, his chance for patent protection fell in the pit and died on the spikes.
There are two major traps working against IP protection. The one that catches inventors most often is the filing deadline. U.S. patent applications must be filed within one year of offering an invention for sale, selling it, using it in public, or describing it in a printed publication. To make this even more treacherous, most other countries require absolute novelty, which means you cannot disclose the invention before you file. With markets being global, this can have devastating consequences.
The second major trap is not paying fees to keep a patent in force. In the U.S., maintenance fees are due 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. (In most other countries these dues are annual. If you miss paying maintenance fees, the patent expires. According to the latest USPTO Annual Report, about 100,000 patents expire every year for failure to pay maintenance fees. Many of these are intentional, but some get missed.
Don’t disclose your invention before you file a patent application. In the US, you can file a provisional application. You can think of these as a Patent Light. They only have to describe the invention. Provisional applications have fewer requirements and are less expensive. They are good for one year and protect your filing date if you file the non-provisional application (the actual application that gets examined) within that one year. They allow you to disclose your invention and protect your right to file in other countries. They are great for testing the market and not losing rights.
If you have patents, make sure that all critical dates are in a reminder system, so you don’t miss paying the fees for keeping your patent alive.
Have questions about patents, copyrights, trade secrets, or other types of Intellectual Property? Let’s talk and assess your IP today.