In this article we are going to discuss the complicated aspect of marketing strategy when applying for a patent.
Obtaining a patent is a complicated process under normal circumstances. Under United States law, a company or person is entitled to a patent unless the invention has been for sale in the country for more than one year prior to the date of application for the patent. This applies to both sales and sales offers. Therefore, companies conducting marketing campaigns must be careful not to destroy their patent rights. In a perfect world, a patent application must be filed before sales begin. But then that would hurt the company’s bottom line because it ultimately puts profits on hold. In a competitive market, this could spell disaster for the company.
Therefore, it is important for a business to understand what exactly starts the one-year clock. In other words, what can they do and what can’t they do to prevent their product from being put on the timer?
To answer that question we need to understand what exactly, according to the law, starts the clock ticking. There are basically two conditions. The first is that the invention must be patent-ready at the time of sale. If it can be shown that the inventor had enough drawings that would allow someone else to use the invention, then this would meet the first criterion.
The second criterion is that there has actually been an offer to sell. In other words, the inventor or the company that owns the invention approaches another company and offers to sell the invention. This can 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 charter.
In the form of a letter, the owner of the invention usually writes a letter stating that they have this or that invention and goes on to say that they think this is something that would improve 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 contact them if they are interested.
At the time of 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 you. This is always a plus. Companies really like to see that the invention they are interested in works.
Where the law comes in, and this is where inventors can turn back the clock, is that the following items do not fall within the two criteria. Request for price information from customers of distributors and sales representatives; publication of preliminary data sheets and promotional information on the characteristics of the invention; communications to sales representatives; sales representatives providing customers with preliminary data sheets; and customer sample requests from sales representatives.
Therefore, an inventor can engage in any of the above activities and NOT start the one year clock. This allows the inventor to do as much groundwork as possible for his patent without actually “technically” starting the process.
This is important information for any inventor if they are trying to gain as much ground as possible in their search for a patent.