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Author Topic: Offer for sale bar due to pre-orders?  (Read 397 times)

Yak

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Offer for sale bar due to pre-orders?
« on: 10-11-10 at 07:17 am »

I encountered the following situation:
Client Group developed a system technology a fews years ago (1st gen).  Group made and sold numerous systems.  Recently Group has been in development of a 2nd gen system which has numerous new features/components which they are interested in attempting to protect.  None of the 1st gen system had any patent applied for.   Assuming that the 2nd gen system improvements are novel and non-obvious, Group would like to apply for patent protection on 2nd gen system.
However, due to the success of the 1st gen system, Group has received numerous pre-orders for the 2nd gen system upon its completion.  I realize that in order for the for sale/offer for sale bar clock to begin, the invention has to be both offered for sale and has to be ready for patenting.  In this case, Group is still 3 to 4 months away from finishing all the design, although they have received and accepted some pre-orders. 
Is there any procedures or documentation that Group needs to be aware of to prove down the line that the invention was not ready for patenting when the pre-orders were made?
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JimIvey

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Re: Offer for sale bar due to pre-orders?
« Reply #1 on: 10-11-10 at 12:10 pm »

Is there any procedures or documentation that Group needs to be aware of to prove down the line that the invention was not ready for patenting when the pre-orders were made?

I'm not aware of any standard procedures or documentation, but I would suggest keeping detailed notes of questions that the practitioner believes must be answered to complete the disclosure.  I would suggest periodically follow up with the inventor(s) regarding development in that/those area(s) and keep good notes.

If the incomplete "design" that requires a few more months is to finalize a commercial product and not to simply make a working prototype, it may be that the one year is running already.

Of course, those notes can also help show diligence toward reduction to practice and, conversely, to show delay in actual reduction to practice.

Regards.
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Yak

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Re: Offer for sale bar due to pre-orders?
« Reply #2 on: 10-11-10 at 12:38 pm »

Jim,
Thank you.
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