Just Do It
Putting off applying for that patent? You may regret it later.
A 1999 Supreme Court ruling (Pfaff v. Wells Electronics Inc.) is
expected to have a huge impact on how quickly inventors apply for a
patent. In this case, inventor Wayne E. Pfaff's patent was
declared invalid because the product had been on sale more than one
year before Pfaff applied for his patent.
U.S. patent law allows an inventor one year to file for a patent
after the product is placed on sale or publicly used in the United
States or described in a printed publication. However, confusion
has stemmed from the definition of "one year": Some
inventors have taken this to mean that they can research their
invention in the market before deciding whether to patent the
idea.
But according to John Cotter and Robert Tosti, patent and
intellectual- property attorneys for Testa, Hurwitz & Thibeault
LLP in Boston, that just isn't so. Says Cotter, "In this
case, the Supreme Court ruled that two conditions must apply for
the one-year period to begin. One, the product must be the subject
of a commercial offer, and two, the invention must be ready for
patenting."
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Tosti explains that in the Supreme Court case mentioned above,
Pfaff had offered a prospective product for sale under terms of
confidentiality. The court ruled that his product met the two
required conditions, making it a commercial offer of a product
ready for patenting. Even though the product had not yet been
produced, the inventor neglected to file for his patent within the
stated one-year period, and the Court ruled that the inventor
didn't have a valid patent.
Both Cotter and Tosti agree that the ruling reinforces the need
for inventors to apply for patent protection early.
Don Debelak is a new-business marketing consultant and the
author of Bringing Your Product to Market (John Wiley &
Sons). Send him your invention questions at dondebelak@uswest.net.