In March 2011  I wrote a newsletter article on the hazards that entrepreneurs face if they offer their invention for sale or disclose it publicly without  filing a patent application on it first.   Briefly, in the US, doing one of those things  starts a clock which gives the inventor one year from the date that they take one of these steps to complete a patent  application.  Abroad, patent rights are lost  as soon as you do something without having filed to protect the  invention.

There is however an exception to this rule and its one that some of my clients have taken advantage of.  Its not easy to invoke but with the help of the advice of a good patent attorney you may be able to make use of it. I call this the R&D exemption and it's the first line of the reference below:

Here's the reference from Wikipedia 

"The on-sale bar of 35 U.S.C. 102(b) is triggered if the invention is both

1. the subject of a commercial offer for sale not primarily for experimental purposes and
2. ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67, 48 USPQ2d 1641, 1646-47 (1998). Ready for patenting means either that the invention was reduced to practice or that enabling disclosures existed."

According to the opinion of some of my experts,  proving that the sale of your invention "is primarily for experimental purposes" is the challenge.  Software inventors have a way of doing this, they declare that a new version is in "Beta" which means that they are continually revising it and the version for sale is not the final form.  What is necessary to make use of the R&D exemption is to prove that your invention is in Beta even though it is for sale.

How do you do this?   One strategy is to document the offering as an experiment. This means you have to keep careful records that indicate how you are conducting the experiment, what it is you are trying to learn etc.   For example you may be testing the market acceptance of a particular feature,  you may have different versions of the invention to try out.

In Tokyo there is a district called the Akihabra.  In this area of the city the major Japanese  electronic companies offer for sale many different versions of the latest brainstorms coming out of their laboratories.  The original Sony Walkman and many other products began their life in  the Akihabra.

So if when you offer your product for sale you offer different versions with different feature as is done in Akihabra, you have convincing evidence  that the product is still under development and a final version has not yet been chosen. 

Besides careful records your sales literature needs to reflect the fact that the product is in development as software companies do by declaring a product is Beta and inviting prospective buyers to try it out and send their comments to the company.  This is not a bad tactic in any case as it allows you to improve your product so it better aligns with what your customers want and connects you better to them.  

If you need help understanding and getting the Research Exemption  or any other patent issue check us out at www.alacartepatents.com , write us at rblazey@businessmetamorphosis.com or  give us a call at  (585) 520-3539  

Charting a Clear Path Forward

Dealing with a tangled web of choices

 

At Opportunity Associates our job is helping our clients sort out  a web of possible choices to determine what is the best direction for them to take.  When  a client has been doing the same thing for years and even decades after a while everything becomes routine.  Then sometimes almost overnight, strategies that worked for years no longer work.   Business begins to level and then to fall.   Sometimes its clear what the cause is and sometimes not.

Essentially the world has changed.   The loyal customer base that has long supported the business has gone away.   In the movie " You've got Mail",   Meg Ryan plays the owner of a small bookstore that is experiencing exactly this problem.

A new megastore FOX books (owned by Joe Fox (Tom Hanks)) goes up  nearby and all of a sudden things are different.  It doesn't matter that  Meg knows 1000 times more about the children's books she sells than the clerks at the new superstore.   It doesn't matter that her customers have been buying from her for years.

All of a sudden her customers  have alternatives they didn't have before and prefer the low prices and glittery ambiance of the superstore to her  small and friendly shop and personal service. Meg decides to fight,  but its too late.  Her business model has been superseded.

What we try to teach our clients at OA is that  the time to evaluate other alternative strategies and business models is BEFORE you are forced to change direction in a crises,  before the FOX books moves in next door to you.

Every business has alternative strategies and business-people who are watching what is going on in their industry know what is happening.   Clearly FOX books was not the first super bookstore to enter the marketplace.  Meg  didn't prepare for the inevitable.   She either paid no attention to the changes in her industry or she  simply hoped that a super bookstore wouldn't move in next to her. And she engaged in wishful thinking believing that her long term customers would never desert her.

At OA we ask our clients to prepare a list of opportunities to create new business.   We help them  analyze those opportunities,   compare them and use them to create other opportunities.  Next we  help them  pick a reasonable few that appear to have the best chance of success to evaluate in more detail and build action plans around.

This approach may feel uncomfortable or unnecessary to many clients who would like to keep doing what has worked so well for them in the past, but it's the best way to have  a lifeboat available when  an  iceberg appears out of  nowhere to sink your  business.  OA doesn't ask you to stop doing what works for you now.  Just to spend some time preparing alternatives for when it does not work anymore.

  To learn more about the OA process and how we can help  you , log on to our website at www.opportunity-associates.com.