Inventors are usually told to start marketing as early as possible. For an invention that has not yet been protected, that advice carries a real risk. Once you publicly disclose your invention or offer it for sale, a clock starts running on your patent rights, and in much of the world it may already have run out. Below is the order of operations we recommend, and how to talk about your product once you begin promoting it.
Timing: Disclosures and Offers for Sale
Under U.S. law, an invention generally cannot be patented if it was publicly disclosed, in public use, or on sale before the application is filed. The inventor’s own disclosures get a one-year grace period, but we advise clients not to plan around it, for three reasons.
First, most other countries do not offer a comparable grace period. A trade show demonstration, a social media post, or a crowdfunding page can eliminate your foreign rights the day it goes live, even if you file in the United States well within the year.
Second, “on sale” is broader than most inventors expect. A commercial offer for sale may be enough, even if nothing has been built or delivered. A sale can trigger potentially trigger the bar even when its terms are kept confidential. A non-disclosure agreement helps protect the details of your invention in a conversation. It does not cure a sale or an offer for sale.
Third, the United States awards patents to the first inventor to file. The grace period does not stop a competitor from filing their own application before you do, and every month of public exposure gives them more opportunity.
These are examples of activities that can start the clock without the inventor realizing it:
- Launching a crowdfunding campaign or accepting pre-orders
- Listing the product on an online marketplace
- Demonstrating a prototype to investors, retailers, or customers without a signed NDA
- Posting photos or videos on social media or your website
- Distributing a pitch deck that describes how the invention works
- Selling or giving beta units to customers without confidentiality obligations
The practical answer is to file a provisional patent application before any of these steps. A provisional gives you an early filing date and twelve months to file the non-provisional application. That same twelve months is the window to file in most foreign countries and claim the earlier date. Keep in mind that a provisional only supports what it describes. A thin provisional will not protect features it never mentions, so if your product changes as you refine your prototype, file again before you show the changes to anyone.
Using “Patent Pending”
Once a patent application is on file, provisional or non-provisional, you may mark your product, packaging, website, and sales materials “patent pending” or “patent applied for.” The phrase puts competitors on notice that you are pursuing protection, and it gives retailers and investors some confidence that you have taken the steps to protect the product.
The phrase has limits. It does not give you any enforceable rights, and it does not mean a patent will issue. The claims that eventually issue may be narrower than you hoped, or the application may be rejected. For applications that are published, the law does provide limited rights to recover a reasonable royalty from infringers who had actual notice of the application, but only if a patent issues with substantially the same claims.
Just as important is knowing when to stop using it. If you abandon the application, or a provisional reaches its twelve-month anniversary without a non-provisional being filed, the product is no longer patent pending. Continuing to say so can run afoul of the federal false marking statute, and it signals to competitors and counsel that you are not paying attention. When a patent does issue, replace “patent pending” with the patent number. Marking the product with the number (or with a web address that lists it) is what preserves your right to recover damages from infringers who did not have actual notice.
Trademarks and Service Marks
A patent lasts twenty years from filing. A brand can last as long as you use it and maintain the registration. When your patent expires, competitors are free to make the same product, but they cannot use your name. For many inventors, the brand ends up being the most durable asset they own.
A trademark identifies the source of goods, and a service mark identifies the source of services. They are protected in much the same way, and both exist so customers can tell your offering apart from a competitor’s. A few points we raise with clients:
- Choose a distinctive name. Invented or arbitrary names receive stronger protection than names that merely describe the product, and purely descriptive names may not be registrable at all.
- Clear the name before launch. A search of the USPTO database is a start, not a finish, because unregistered marks in use also carry rights. Check domain names and social media handles at the same time.
- File early. An intent-to-use application lets you reserve a name before you begin selling.
- Use the right symbol. The ™ and ℠ symbols may be used at any time. Use ® only after the mark is federally registered, since using it prematurely can cause problems later if you need to enforce the mark.
Packaging, manuals, software, and marketing copy may also be protected by copyright, and distinctive product designs or packaging can sometimes qualify as trade dress. We are happy to review the full picture for you.
Marketing Claims: Say What Is True
The way you describe your product, and the protection around it, matters as much as when you start. Overstated claims invite trouble from competitors, regulators, and sometimes customers.
- Do not say “patented” until a patent has issued. While an application is pending, “patent pending” is the accurate term.
- Describe the coverage accurately. If a patent covers only one component, a method, or an earlier version of the product, do not suggest the whole product is protected.
- Be able to support performance and comparison claims. Statements such as “the first,” “the best,” “clinically proven,” or “FDA approved” need substantiation. Competitors can bring false advertising claims under the Lanham Act, and the FTC and state agencies regulate advertising as well.
- Be careful when talking about competitors. Telling the market that a competitor infringes your patent, before you hold an enforceable patent that covers their product, can expose you to liability of your own. Speak with counsel before sending any such statement.
File First, Then Promote
The sequence matters. Secure an early filing date, clear and register your brand, and describe your product accurately when you go to market. If you are planning a launch, a crowdfunding campaign, or a first meeting with investors, contact us before you go public. Our patent attorneys can prepare a provisional application, run a trademark search, and review your marketing materials, so that you promote your invention without giving up the rights you are trying to build.
This article is provided for general information only and is not legal advice. Reading it does not create an attorney-client relationship.
About the Author
John Woodson is a Registered Patent Attorney who practices in the area of patent prosecution, patent infringement studies and client counseling. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment, laser and optical devices, semiconductor devices, semiconductor processing, hydrocarbon recovery and well logging, mechanical devices, medical devices, and software and Internet related inventions.