Amy Goldsmith’s iPoems, Patent Law Edition

Amy Goldsmith | December 5, 2018

Patent law is an area in which many attorneys are not totally comfortable, and as more and more manufacturing happens outside the U.S., it’s important to be able to advise your clients on protecting their IP rights. Well, if a picture is worth a thousand words, an informative limerick might be worth an entire law review article. For your end of the year enjoyment and edification:

I.           Zottapaloosa is here,

It’s the toy of the year,

Proclaimed far and wide,

Inventor Zeo beams with pride,

Lawyer Zares isn’t smiling,

There was no patent filing.

All is not lost: if Zottapaloosa was introduced within the last year, a U.S. patent application can be filed since the U.S. provides a one-year grace period from the first disclosure. However, many foreign nations don’t provide grace periods so by making an invention public before filing, the ability to gain foreign patent protection will be lost. Best practices include requiring inventors to record their successes and failures from Screen Shot 2018-11-28 at 2.39.50 PMthe beginning of the inventive process, accessible only to people who all understand that the invention must be kept secret at least until a patent application is filed. These principles apply equally to design patents (protecting the look of a product) and utility patents (protecting the functional features and methods of manufacture).

Takeaway: Keep records of success and failure and keep the invention secret before the patent application is filed (and afterwards, too!). If you must disclose it (for instance, to an investor), get a non-disclosure agreement signed first. But be aware that the Supreme Court is now considering whether an inventor’s sale of an invention to a third party who signed a confidentiality agreement is prior art.

II.          Zeo’s prototype is built,

Produce it to the hilt,

Mexico is near,

Its pricing isn’t dear,

Lawyer Zares files,

KnockOffSource is ahead by miles.

Keeping records of the new invention and filing before first disclosure is critical but so is filing first. Within the last few years, U.S. patent law changed from “first to invent” to the world standard of “first to file.” But it’s equally important not to file too soon, before the invention is complete, since the goal of a patent is to teach someone skilled in the art how to reproduce what you’ve created – which should be the finished product.

One solution for utility applications is to file a provisional application to establish an early filing date. This placeholder application isn’t examined by the Patent Office, and if the full blown utility application is filed within one year of the provisional application’s date, it’s entitled to rely on that first date – but only to the extent that the disclosure in the placeholder is sufficient to support the disclosure in the second filing. So if Inventor Zeo’s prototype contains all of the critical required features but some minor refinement is still needed, a provisional application can be filed to preserve that early filing date and beat KnockOffSource to the gate. But provisional filing isn’t available for design patents, so once the design is finalized, it’s prudent to file the design case simultaneously with or after the provisional filing.    

Takeaway: File the provisional application and the design application as soon as the inventor has all of the critical features figured out: the goal is to be first to file, not last!

Printed with permission from: Inside Newsletter, Fall 2017, Vol. 35, No. 2, published by the New York State Bar Association.

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About the Author

Written by Amy Goldsmith

Successful, profitable businesses share certain characteristics: immediately recognizable brands, desirable products or services, and a strategic plan which minimizes legal risks. As co-chair of the Intellectual Property Group at Tarter Krinsky & Drogin, Amy B. Goldsmith partners with clients to provide practical legal advice and connections to grow their businesses. A strategic advisor, she guides clients in all stages of their development from idea conception and protection, to funding, manufacturing and enforcement. She will advise you whether your trademark is available in the United States and globally, if patents should be a part of your strategy, and if your design team’s new product shares too many features of the competition’s copyrighted bestseller. She will design contracts that make sense. Amy will also guide you through the clearance process, whether the subject matter is books, movies or live action. If a dispute is on the horizon, she will be by your side until a fair resolution is reached. Amy protects the global interests of national and international clients in a wide variety of industries, including fashion, cosmetics, pet products, publishing, medical devices, exercise equipment, web-based business applications and telecommunications platforms, and consumer and designer goods. She is a Vice President of the New York Women's Bar Association. She is also a member of the American Bar Association and the International Trademark Association (INTA) and is on the Board of Directors of Savvy Ladies, a non-profit whose mission is to educate women to be financially savvy. Amy also was a speaker at and served on the Advisory Board for TedxTimesSquare. Before joining Tarter Krinsky & Drogin, Amy was a partner at Gottlieb, Rackman & Reisman, P.C.


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