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Why Not Throw in the Design of the Kitchen Sink?

By Christopher P. Foley, Elizabeth D. Ferrill and Larry M. Sandell
September 30, 2013

When it comes to seeking patent protection for a new product, companies are often faced with a dilemma: delay patent filings until the product has proven commercial value, or gamble substantial resources trying to create a portfolio of utility and design patents for a product that may not be successful?

The first option is hazardous. In the wake of the U.S. transition to a 'first-inventor-to-file' patent system under the America Invents Act (AIA), companies seeking patent protection for new products have even more reason to preserve their patent rights before public disclosure or offer for sale. Under the AIA, the one-year grace period for filing has been limited and the risks of post-disclosure patent filings are still largely unknown. The importance of early filing was further highlighted in Hamilton Beach v. Sunbeam Products Inc., No. 2012-1581 (Fed. Cir. Aug. 14, 2013), where the Federal Circuit held that a foreign supplier's secret, pre-critical-date offer to sell a company's own design to the company (i.e., after the supplier would have manufactured it per the prospective instructions of the company) can serve as a disqualifying offer for sale. On the other hand, the USPTO has indicated that, post-AIA, a 'secret sale ' does not qualify as prior art.' (See AIA Examination Guidelines, 78 Fed. Reg. 11059, 11060 (Feb. 14, 2013).) So, companies should consider filing applications even before approaching suppliers about manufacturing their innovative products.

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