Professor Demchick's Patent Services

Paul H. Demchick, United States Registered Patent Agent
(United States Patent and Trademark Office Registration 52,808)

Professor Demchick's Blackboard

Dr. Demchick has been a college and university faculty member for many years. On these Blackboard Pages he does a little teaching. These pages are intended as general, introductory information. Compromises were made between including details in these pages and keeping the pages readable for a general audience. These pages are not intended as legal or other professional advice.

ACTIONS TO AVOID PRIOR TO FILING A PATENT APPLICATION

A sad and common story of a would-be applicant: "I started selling it a couple of years ago and people keep telling me I should patent it. Finally, a friend convinced me to give you a call." The heartbreaking news is that this inventor is out of luck. In my practice I have had to deliver that sort of bad news more often than I like. I am always left with the feeling that if only I had been contacted before, I could have been of assistance.

In the United States there are ways that inventors can destroy their rights to obtaining patents. Common mistakes include doing any of the following more than a year before filing a patent application:

  • Selling the invention in the United States
  • Offering the item for sale in the United States
  • Disclosing the invention in a publication anywhere
  • Using the invention publicly in the United States

    • The are lots of gray-areas. Here are hypothetical examples:

    Jacob Tomlinson, a real estate agent, invented a gadget that real estate agents might use. He gave a presentation about the invention sixteen months ago at a thirty person gathering of real estate agents. The only "paper" version of the presentation was that the agenda for the meeting included "Jacob Tomlinson will discuss his new invention which backlights messages on the window shades of homes for sale."

    Linda invented a new gardening device. After fully developing the invention she has used it on her own lawn for two years. Neighbors have seen her using it.

    Larry is interviewed by the local newspaper. The interview is published. He discusses his invention. He gives some, but not all, of the details.

    Which of the inventors in the scenarios above fell in a trap? More important than the answer to that is: STAY AS FAR AWAY FROM GRAY-AREAS AS POSSIBLE. Ideally, don’t sell, don’t offer for sale, and inform as few people as possible prior to filing a patent application.

    Is it o.k. to sell, offer for sale or publish as long as you file an application within one year? Yes, but only if you are certain that you will not ever seek patent protection in countries other than the United States. The United States is one of the very few countries that have the one year "grace period" to allow filing within the year after publication or sale. If you have any thoughts of seeking patent rights in other countries, please file your United States application before sale, offer for sale or publication. Also, please remember to mark your calendar so that the one year does not slip by. There is no forgiveness on that date. Please also remember that patent applictions take some time to prepare, so done wait until the last minute.

    If I can be of service, please do not hesitate to contact me.