You’ve invented a new product. Congratulations! Now you want to market your product and make money. If you’re considering applying for a patent on a new invention, there are considerations beyond quick sales that come into play. Let’s briefly examine when a new product is patentable.  

Is My Product Patentable?  

Under U.S. law, patents may be granted only for “novel” inventions. “Novelty” was defined in the U.S. by the Court in In Re Bartlett, “[t]he degree of difference [from the prior art] required to establish novelty occurs when the average observer takes the new design for a different, and not a modified already-existing, design.” 300 F.2d 942, 943-44 (CCPA 1962) (citations omitted).   

In today’s world, “prior art” is pretty much everything that’s out there, either in the real world or online. This and other aspects of patentability are discussed in our prior post about ​​what patentable means. For today’s discussion, it is enough to say that “novelty” is your invention’s “secret sauce,” which must be preserved prior to filing a patent application. 

Which Comes First: Sales or Patent?  

So, you’re ready to start advertising and selling a product but also want to patent your invention. Do you have to patent your product before you sell or advertise it? Or can you sell or advertise a product and seek a patent simultaneously?  

Prior to 2011, any discussion, advertising or sales of an invention meant you could not obtain a patent on the invention. Now, under the America Invents Act of 2011 (AIA), inventors can publicly disclose their inventions for up to a year prior to the submission of a patent application and still maintain patentability.  

But what is public disclosure when it comes to patent law? Public disclosure refers to any disclosure the inventor makes to anyone at all, not protected by some type of binding confidentiality. Under patent law, even telling a friend about an invention is public disclosure.   

If you’re running an advertising campaign for your product, even if you haven’t sold the invention, you’re now on that one-year clock. This one-year time period for you to patent your invention begins the first day you run the campaign (if not sooner, depending on your circumstances).  

The Internet and Public Disclosure  

Sales and advertising are public disclosures in the patent world that start the AIA’s one-year clock running. However, the internet also affects public disclosure of inventions. Even inadvertent disclosures about your invention on the internet can crush your dreams of obtaining a patent.   

Say, for example, you post about your “secret sauce” that’s in development on a Reddit forum, or you tease a picture of your invention on Instagram. Social media discussion is considered “public disclosure” of an invention, even if your post is in a private or restricted-access group.   

Prototypes and Patents 

To publicly disclose your invention or its “secret sauce,” and thus preclude patentability, you do not have to have a working prototype of the invention. Discussion of new features, ideas or concepts that your invention will have or that you are developing are also public disclosures that “put you on the clock” of that one-year window. 

How to Protect Patentability  

With so many ways an inventor can get in his own way, what’s an inventor to do? How do you protect the patentability of your invention? The easiest answer is simple: keep everything about your invention confidential prior to the filing of a patent application.   

If you must disclose any part of your invention to another party, contact an experienced patent attorney to assist you with obtaining confidentiality agreements. An experienced patent attorney can help with special arrangements that you need to make to secure your rights to your invention.   

It’s important to remember that while the law now allows disclosure of an invention or its “secret sauce” prior to the filing of an application for patent protection, this is a running clock you may not want to activate. The safest approach is to simply wait to sell, advertise or even discuss your invention until you have your patent application filed. Then you can tell the world that your new idea is “patent pending!” 

If you need a patent attorney, Sand, Sebolt and Wernow is an intellectual property law firm. We specialize in patents, trademarks, copyrights, IP (intellectual property) litigation licensing, foreign filings and trade secrets. We’re also innovators, just like you. Our staff includes attorneys, patent agents and engineers with experience in electronics, mechanics, software, hardware and robotics. Contact us.