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   Design disclosure - One year rule?
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   Author  Topic: Design disclosure - One year rule?  (Read 534 times)
poddesign
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Design disclosure - One year rule?
« on: Aug 16th, 2006, 8:04pm »
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Hello,
 
If you are seeking a design patent on a product you originally conceived several years ago, how do the following scenarios effect patent eligibility?
 
1.) An early version of the design, featuring the key patentable element,  was entered into a design competition several years ago.  A prototype was submitted and returned with no recongnition awarded to the design and no public display of the entry.  The competition bylaws explictly stated that the designer retains all rights/ownership of any submitted designs.
 
2.) A version of the design , featuring the key patentable element, was shown to a potential manufacturer and offered for licensing during the development phase of the design several years ago.  The company declined the licensing option and recommended another potential manufacturer.
 
3.) A version of the design, featuring the key patentable element, was shown to a potential manufacturer under a non-disclosure agreement and a contract to license the design in return for a royalty percentage was signed.  The manufacturer did not develop, market, or display the design in anyway and now has optioned to void the contract under the designers discretion, just short of the one year life of the licensing contract.
 
Any help/insight would be graetly appreciated. Thanks.
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Bill Richards
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Re: Design disclosure - One year rule?
« Reply #1 on: Aug 16th, 2006, 8:31pm »
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No. 1:  Probably OK.  Arguably not a "publication" or public use.
 
No. 2:  An offer for sale, even if not accepted triggers the one-year bar.  You need to look at this more closely.  The item also has to be "ready for patenting".  Given your wording, this may well be true, but it's hard to tell without all the details.
 
No. 3:  The same as No. 2.  The problem is that the general rule is one cannot commercially expolit the invention more than one year ahead of the filing.
 
I'd suggest you contact a patent attorney to whom you can give all the details and ask for an opinion.  There are those on this Forum, including myself, who would be able to help.  In fact, others may chime in with a definitive answer just based upon the facts presented.  But, it's always good to get an opinion based upon all the facts.  Facts that should not be presented in this public forum.
« Last Edit: Aug 16th, 2006, 8:34pm by Bill Richards » IP Logged

William B. Richards, P.E.
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Isaac
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Re: Design disclosure - One year rule?
« Reply #2 on: Aug 16th, 2006, 9:18pm »
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on Aug 16th, 2006, 8:31pm, Bill Richards wrote:
No. 2:  An offer for sale, even if not accepted triggers the one-year bar.  You need to look at this more closely.  The item also has to be "ready for patenting".  Given your wording, this may well be true, but it's hard to tell without all the details.
 
No. 3:  The same as No. 2.  The problem is that the general rule is one cannot commercially expolit the invention more than one year ahead of the filing.

 
An offer to license rights to an invention is not an offer to sell in the 102(b) sense.  
 
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Isaac
Bill Richards
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Re: Design disclosure - One year rule?
« Reply #3 on: Aug 17th, 2006, 4:54am »
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on Aug 16th, 2006, 9:18pm, Isaac wrote:

 
An offer to license rights to an invention is not an offer to sell in the 102(b) sense.  
 

 
Isaac,
 
OK, I stand corrected.  Can you expand on your post or provide a reference?  
 
Thanks!
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William B. Richards, P.E.
The Richards Law Firm
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614/939-1488
Isaac
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Re: Design disclosure - One year rule?
« Reply #4 on: Aug 17th, 2006, 6:39am »
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From Chisum on Patents
 
"Section 102(b) refers to the 'invention' being on sale in the United States. Although there is relatively little authority on the point, it seems clear that this means that an embodiment of the claimed invention was on sale.  17. Thus, an offer to sell or license the patent rights to an invention should not be viewed as an offer of the invention for sale, at least if the offer and nature of the circumstances make clear that the offeree or licensee could not sell or use such embodiments without further development work.  18. A contrary result would make it difficult for inventors with limited resources to raise capital to perfect the invention or prepare a patent application."
 
Looking at some of the case law discussed in Chisum, in a given case, the characterization of a transaction as being a license of patent rights rather than an offer to sell an embodiment of the invention can sometimes turn on some very subtle parts of the exchange.  
 
 
« Last Edit: Aug 17th, 2006, 8:18am by Isaac » IP Logged

Isaac
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