I spent the better part of last week in Washington, DC conducting Examiner interviews for some of my clients that have pending software patent applications. The great news is that I believe we now have a handle on the ever changing Bilski ruling. I know it sounds like a misstatement to say that the Bilski ruling is ever-changing, but apparently, the reality of the situation is that when the Federal Circuit provides a ruling, it comes with little or no guidance for the Examiners to properly examine applications based on the ruling. The guidance comes from internal memos to Examiners from the PTO indicating how applications should now be examined based on Bilski. The problem that Applicants run up against is that language that may have been allowable in light of Bilski under last week’s memo is not necessarily allowable under this week’s memo. The point of all of this is that I gained a lot of insight from interviewing two different Patent Examiners on the type of language that the PTO is looking for in software applications to place the claims within the requirements of Bilski.
The real point of this post, however, is to provide a warning to those inventors out there that might be getting advice on how to launch their new inventions from major news sources. Always remember that advice you read in the newspaper, a magazine or see on television cannot and should not be taken as legal advice. You should not rely on general advice to figure out what is best given your unique situation, and here is a case in point. While I was in DC, I was able to do something that is not normally available to me as the father of two kids under the age of 4 – I was able to watch the news. I caught a segment on CNN titled Small Business Success. This segment has potential to be a really great feature for inventors but, unfortunately, is riddled with bad advice, or at least lacking in good advice.
This segment highlighted a product known as the “Spibelt” as well as its inventor. The inventor, Kim Overton, is a typical inventor – she identified a problem and came up with the solution to the problem. The issue I take with the CNN segment is the following advice that they outline throughout the segment as the tips to small business owners:
- run with the idea
- show your product
- take the leap
- sell, sell, sell!
Curiously enough, the word patent wasn’t even mentioned in the segment. I did a little bit of research, and it seems as though Ms. Overton has filed a patent application, US Patent Application No. 20080190980. Thankfully, Ms. Overton had the forethought to file a utility patent application so that she can exclude others from making, using, selling or offering to sell her product. In fact, Ms. Overton did exactly what small business owners should consider doing. It appears as though she filed a first provisional patent application on February 13, 2007. She then may have refined her invention a bit and filed a second provisional patent application on May 29, 2007. Filing these provisional patent applications provided Ms. Overton a one year period to determine whether or not it would be worth it for her to move forward with her product. During that year, she may have started manufacturing her product, selling it, doing some marketing and other activities that small business owners may normally engage in. Obviously, in Ms. Overton’s case, her product has been wildly successful and worth moving forward with a utility patent application.
If an inventor were to follow the tips above, however, without filing a patent application, there can be an immediate problem with items 2 and 4. Showing your product to others, in most cases, immediately starts the clock ticking on the availability of U.S. patent protection, and almost certainly eliminates any possibility of obtaining patent protection outside the United States. Similarly, selling your product will have the same issues. What many inventors don’t know is that by even offering your product for sale the clock can start ticking on the availability of U.S. patent protection and can also eliminate the possibility of obtaining foreign patent protection. In order to obtain patent protection in the U.S. you absolutely must file a patent application within 12 months of offering your invention for sale or the invention being used in public. For further discussion of this see What is Prior Art? and Patents: The Novelty Requirement.
I am not trying to be overly critical of the tips provided by CNN. These tips can be very helpful to small businesses, but this advice was somewhat incomplete and potentially misleading and harmful. In context of Ms. Overton’s invention it was good advice, but that is because she already filed a patent application. Filing a patent application is a great first step to protecting your rights to exclusivity with respect to your invention. Small businesses can benefit from filing provisional patent applications to insure that their rights are preserved while doing market research and even while beginning to manufacture and sell their products. Kudos to Ms. Overton for making all the right moves to protect her rights!