ARE YOU FORFEITING PATENT PROTECTION?

first_imgPITCH PERFECT–WHEN YOU PITCH YOUR IDEA TO POTENTIAL INVESTORS?December 20, 2017 by Rick Martin FacebookTwitterCopy LinkEmailShare Since the debut of Shark Tank in 2009, a number of similar contests and competitions involving entrepreneurs publicly “pitching” their idea or invention to a group of people have arisen across the country. The general premise is that a select number of entrepreneurs have a limited amount of time (say 3 minutes) to pitch their idea to those in attendance. At the end of the evening a panel, or in some cases all those in attendance, vote for their favorite and awards are given for the best pitches. In some cases, seed money is awarded to the winning entrepreneurs to help move their project forward.For the entrepreneur, making such a public pitch before filing an application for patent protection is potentially devastating. Securing patent protection for an invention provides a huge competitive advantage to a start-up – the ability to exclude all others from making, using, importing, selling or offering to sell your patented invention for up to 20 years. In many cases, without proper patent protection, the barriers to entering the market are so low that good ideas can be legally copied by those with market influence leaving the entrepreneur/inventor empty handed. The best way to avoid such a devastating loss – file at least a provisional patent application that provides “full disclosure” of your invention prior to making your pitch.Prior to the America Invents Act (AIA), which took effect on March 13, 2013, inventors had a one-year grace period after a public disclosure to file their application for patent in the United States before that disclosure would be considered to be prior art barring issuance of a patent. The biggest change in the AIA was going from a “first to invent” system to a “first to file” system. Accordingly, if two patent applications are filed after March 13, 2013 claiming the same invention, the USPTO does not consider who was the first to “invent”, but rather who won the race to the Patent Office by filing first. An inventor who publicly pitches an idea before filing for patent protection runs the risk that someone in the audience will take that idea, modify or expand on it, and file for patent protection first, effectively precluding the pitching inventor from securing patent protection.Another potential problem that may arise when an inventor pitches before filing is the subsequent re-disclosure of the invention by a third party. Consider the following common scenario – Inventor discloses her idea at a Pitch Competition on December 22, 2016. A third party who was in attendance presents his “improvement” to the original pitch to potential investors on July 10, 2017. Inventor files her provisional application on December 21, 2017. One would think that the one-year grace period clearly applies under these circumstances. However, the answer, as is often the case in the law, is not so clear cut.Under the AIA, the inventor’s ability to overcome the July 10, 2017 third party prior art is significantly limited. First, in order to avoid the third party prior art, the inventor must first prove that the third party did indeed obtain the information form the inventor. If third party was in attendance at the December 22, 2016 presentation, proof of that may not be too difficult. However, as is often the case, the third party may have received the information indirectly such as from another person who was in attendance. As the link to the original presentation becomes more distant, it becomes more difficult to prove the third party’s disclosure was obtained from the inventor. If such a situation arises, affidavits must be prepared and filed with the USPTO during the prosecution of the patent application, adding significant time and cost to the process of obtaining a patent.All of this can be avoided by simply filing an “appropriate” provisional application before the pitch is made. For the application to be “appropriate”, it must include a written description that enables a person of ordinary skill in the art to make and use the invention. Thus, while a provisional application can be a useful tool for establishing an early filing date, simply filing academic papers, white papers, inventor notes or anything else that may be lying around does not necessarily provide protection. Therefore, when filing a provisional application, it is a good idea to seek the assistance of a registered patent attorney or agent who is experienced and familiar with the written description requirement of the USPTO.To further complicate the one-year grace period, it can often times be difficult to establish just exactly when the grace period begins. Clearly, pitching your invention at a pitch completion attended by the public would trigger the start of the grace period. But looking deeper, was there some other activity that you engaged in earlier that may have triggered an earlier start to the grace period? Has there been another earlier “public” disclosure of the invention or an “offer to sell” the invention? There are a variety of risks associated with reliance on the one-year grace period that make it easy for an inventor to misjudge the actual beginning and end dates of the grace period.Lastly, if you have global aspirations for your invention (which you should), most other countries have no such grace period, and such prior public disclosures are considered to be an “absolute bar” to obtaining patent protection. Australia and Canada operate under a 12-month grace period similar to the United States. Japan, Europe and the UK operate under a 6-month grace period, but under very limited circumstances. The World Intellectual Property Organization (WIPO) maintains a  for a number of countries throughout the world. The filing of an appropriate US provisional application prior to any public disclosure as discussed above effectively gives a one-year grace period from the date of filing to the inventor for purposes of pursuing foreign patents. A knowledgeable patent attorney will be able to devise a filing strategy to best fit the needs of any inventor.Are you about to pitch your idea to potential investors and/or the public in a pitch competition and concerned about protecting your patent rights? If so, contact us to see how we can help BEFORE you pitch and potentially compromise your patent rights.EDITORS FOOTNOTES:  Martin IP Law Group is not a typical law firm.  Their practice focuses on Intellectual Property – Patents, Trademarks, Copyrights and Trade Secrets. They will help you build value in your business by protecting your ideas, inventions and identity, including:Identifying and assessing the value of intellectual property;Preparing and prosecuting US and International patent and trademark applications.Preparing freedom-to-operate opinions, validity/invalidity opinions and infringement/ non-infringement opinions.Conducting due diligence of third party IP portfolios for acquisition, litigation and/or design-around.Conducting negotiations and drafting agreements relating to assignment, licensing, and other transactions affecting intellectual property. If you have any questions concerning Patents | Trademarks | Copyrights please contact Mr. Martin at 318 Main Street | Suite 503 | Evansville, IN 47708 ( 812.492.4478  | rick[email protected]  or |www.IPSolutionsLaw.comlast_img read more

"ARE YOU FORFEITING PATENT PROTECTION?"

Ohio Crop Progress — July 2, 2018

first_imgShare Facebook Twitter Google + LinkedIn Pinterest Producers used the dry conditions last week to make headway with haymaking, straw baling, and other fieldwork, according to Cheryl Turner, State Statistician, USDA, NASS, Ohio Field Office. There were 4.2 days suitable for fieldwork in Ohio during the week ending July 1. High temperatures were ideal for wheat maturation, however, they caused stress to livestock. Winter wheat harvest was well underway. Lingering wet soil conditions and additional scattered storms last week caused some damage in crops fields. There were some reports of ponding in fields, flood damage, and yellowing of plants. Soybean emergence was nearly complete. Crop conditions remained mostly good to excellent.Click here to read the full reportlast_img read more

"Ohio Crop Progress — July 2, 2018"

India and Britain spar over who will open CWG

first_imgThe Indian government and the office of Britain’s Prince Charles are reportedly sparring over New Delhi’s plans for a “joint inauguration” of the Commonwealth Games (CWG) which will not give the prince a solo role at the October 3 ceremony.The government has reportedly drawn up plans for President Pratibha Patil to declare the sporting event open. Charles, representing Queen Elizabeth who is skipping the event because of the ” sheer volume” of her engagements, will have a similarly important but not singular duty at the ceremony.This has resulted in diplomatic differences between India and Charles’s office even though there is no formal word on the matter yet.Traditionally, the British monarch who heads the Commonwealth of former British colonies, declares these Games open. The role can also be given to her representative.Clarence House, the official residence of the Prince of Wales in London, insisted that Charles will fulfill the duties originally intended for the queen.A spokesperson for Clarence House said, ” The queen has asked the prince to represent her in Delhi, and carry out the same duties she would perform if she was there. He will officially declare the Games open.”Sources in Rashtrapati Bhawan, meanwhile, said that so far they had no intimation about the President inaugurating the Games.New Delhi believes that with the queen not attending the Games, there is a qualitative change in the situation. Sources in the government, who confirmed the development over the ” joint inauguration” issue, said had Elizabeth attended the event, she alone would have received the Queen’s Relay Baton, read out the message to the athletes and declared the Games open. But, it is different now that she will not be in Delhi for the October 3 opening.advertisementDuring the discussions in the government on the opening ceremony, the possibility of a ” joint inauguration” was put on the table. It was reportedly suggested that Patil could be handed over the Queen’s Baton, followed by Charles reading out the Queen’s message and then the President declaring the Games open, the sources said.Another possibility of a “joint inauguration” by the President and Charles was also reportedly discussed.The Queen’s Relay Baton – which is now on its way to Delhi after being carried through Commonwealth countries across the world – also carries the monarch’s message to participating athletes.Speculation among senior government sources is that the last line of the message is ” I declare the Games open”. While Charles is expected to read the message, including this line, President Patil could also declare the Games open, said the sources who did not want to be named. The details of this option are being worked out.Well- placed sources said that the matter is still being negotiated at the highest levels of the two governments to find a way out of the impasse. The discussions have reportedly also included the Commonwealth Games Federation and the CWG Organising Committee. A final decision is expected early this week.This is not the first time that a member of Britain’s royal family – the monarch or her representative – will not inaugurate the Games. There is already a precedent.The 1998 Games at Kuala Lumpur in Malaysia were inaugurated by the Malaysian King. On that occasion Edward, the Queen’s third son represented her at the opening ceremony.Diplomats have supported the move for an inauguration of the Games by the President.Former foreign secretary Salman Haider said, “It would be gratifying if the President inaugurates the Commonwealth Games. It will be a matter of pride for the entire country.Prince Charles’s presence on the occasion will be an added dimension.” According to him, Charles has often visited India and his position will not be downgraded in any way if Patil inaugurates the Games.Another top diplomat, former foreign secretary Shashank said the President in her capacity as head of state in the queen’s absence should ” ideally inaugurate” the event.” This will be an honour for India. It is most likely that both governments will work out a formula for a role for Charles that will be acceptable to the British royalty.” The British High Commission in the Capital had earlier said that it was ” delighted” that Charles would represent the queen at the opening ceremony.The implication was that he would take on her full role.Charles will be accompanied by his wife, Camilla Parker Bowles. The Prince of Wales is expected to arrive on October 1. He is likely to visit Rajasthan and Punjab during his India visit.advertisementWith input from agencieslast_img read more

"India and Britain spar over who will open CWG"