In this article we’re going to discuss the tricky aspect of marketing strategy when applying for a patent.
Getting a patent is a tricky process under normal circumstances. Under laws of the United States a company or person is entitled to a patent unless the invention was on sale in the country for more than one year prior to the application date of the patent. This applies to both sales and offers of sales. Therefore, companies conducting marketing campaigns must be careful not to destroy their patent rights. In a perfect world, application for a patent should be filed before any sales begin. But then that would hurt the company’s bottom line because that ultimately puts profits on hold. In a competitive marketplace this could spell disaster for the company.
Therefore, it is important for a company to understand just what it is that starts the one year clock ticking. In other words what can they do and what can’t they do in order to avoid their product being put on the timer?
In order to answer that question we have to understand what exactly, according to law, starts the clock running. There are basically two conditions. The first one is that the invention must be ready for patenting at the time of the sale. If it can be shown that the inventor had sufficient drawings that would enable another person to use the invention then this would satisfy the first criteria.
The second criteria is that there has actually been an offer for sale. In other words, the inventor or company that owns the invention approaches another company and offers to sell them the invention. This can either be in the form of a letter to the other company or in an actual physical meeting between the two companies. Usually the meeting follows a letter.
In the form of a letter the owner of the invention will usually draw up a letter stating that they have such and such an invention and go on to say that they feel this is something that would enhance their business. In the letter they would describe what the invention does and how it would help them. They would then ask the other company to get back to them if interested.
When it comes to the meeting the inventor will bring drawings of his invention and present them to the company interested in acquiring the invention. Maybe the inventor even has a working prototype he can show them. This is always a plus. Companies actually like to see that the invention they are interested in works.
Where the law comes in, and this is where inventors can delay the clock, is that the following items do not fall within the two criteria. Solicitation of customer pricing information from distributors and sales representatives; publication of preliminary data sheets and promotional information on invention features; communications to sales representatives; sales representatives providing customers with preliminary data sheets; and sales representatives’ requests for customer samples.
Therefore, an inventor can engage in any of the above activities and NOT start the one year clock running. This allows the inventor to get as much preliminary leg work done for his patent without actually “technically” starting the process.
This is important information for any inventor to have if he is trying to gain as much ground in his quest for a patent as possible.