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Is your prototype yours?

Is your prototype yours?

Companies frequently introduce new or improved products at trade shows. In the rush to exhibit, the company may jeopardize its patent rights by failing to first file a patent application.

Almost all foreign countries require "absolute novelty" prior to the filing date of a patent application. "Absolute novelty" means that a patent application must be filed before the product is described in print or made known in any other way, in any country, prior to the filing date of a patent application. A new product may destroy "absolute novelty" creating a legal bar to obtaining patent protection. The U.S. does not require "absolute novelty," and gives you a year from the disclosure to file.

What to do. To preserve patent rights, file a patent application on the new product before display at the trade show. Corresponding applications can be filed within a year in most countries by claiming priority from the already-filed application under treaties between the U.S. and most foreign countries.

Business reasons may prevent a patent application from being prepared before the trade show. Because of last minute changes to the product, particularly if the product is a prototype, it may be difficult to file a patent application beforehand. Also, if major changes to the product are expected, it may be better to wait.

Exceptions to the rules. With some precautionary steps, foreign patent rights can be preserved for a short period without filing a patent application, and the new product may be introduced at the trade show. Some countries provide exceptions to the requirement for "absolute novelty" for trade show demonstrations. Rules differ by country to country.

  • Many countries permit a disclosure at an exhibition certified by the state so long as a patent application is submitted not more than six months after the exhibit opens. The local patent office certifies the exhibition in many countries.

  • In Germany, Greece, the Netherlands, Switzerland, and the United Kingdom, novelty is not destroyed by the invention having been displayed at an officially recognized exhibition within the terms of the Convention on International Exhibitions. An International Bureau in France provides the Certificate. Obtain one before the trade show, or at least, contact the International Bureau to make sure that it will issue a Certificate for the particular trade show. When the patent application is filed, the applicant must declare that the invention in question was displayed at a trade show at the time of filing the application and must, within four months of the filing date, furnish adequate documentary evidence in the form of a Certificate of Exhibition.

  • In countries such as Austria, France, Germany, Israel, Japan, Switzerland, and at the European Patent Office, give notice of disclosure to the local patent office after the trade show. A patent application must be filed within six months after the show opens.

An alternative to using the certification procedures is to file a provisional patent application before the new product is exhibited at the trade show. Many countries, including the U.S., permit the use of low-cost provisional applications which must be converted into a regular patent application within one year. Provisional applications may be inadequate because the lower costs are a result of the invention not being fully described.

Kenneth Berner specializes in patent applications. E-mail at [email protected]


Legal questions

Q: Does a patent application filed in the United States before a trade show, for example, preserve patent rights in other foreign countries?

A: Usually. By filing a patent application in the U.S., patent rights are generally preserved in foreign countries. The same is true for patent applications filed in foreign countries. For example, an application filed in Canada can be used as the basis for filing a patent application in Japan. File the application in Japan within one year from the date of filing the Canadian application. Additional patent applications must be filed in each country in which patent protection is desired. Some countries do not have treaties with the U.S., in which case an application must be directly filed in that country before disclosure occurs.

Q: Do printed publications, such as in a magazine or in sales brochures, create a bar to patentability in foreign countries?

A: Yes. Printed publications generally create a bar to patentability, if available before a patent application is filed. An exception available in just a few countries is where the publication was before a learned society, for example, a paper presented to the American Society of Mechanical Engineers. Also, if a disclosure contravened an agreement, such as a confidentiality agreement, there may not be a loss of patent rights.

Q: Can prototypes be tested in public without losing patent rights?

A: No. It is best not to test prototypes in public because the testing may be considered a public disclosure, not experimental, and patent rights can be inadvertently lost.

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