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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."

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

This story appears in the July 2000 issue of Entrepreneur. Subscribe »