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Warning For Designers, Manufacturers, and Inventors: Major Change To U.S. Patent Law |  May 22, 2013 (0 comments)


New York, NY—As of March 16, Congress has likely terminated the one-year grace period that allowed an inventor to try to determine the value of an invention before filing a patent application for it.

All countries worldwide require a patent application be filed before an invention is made public. The United States has been one of the only countries that had permitted a one-year grace period prior to filing a patent application during which time an inventor could try to exploit an invention to see if it had value. Congress recently changed the law, but the changed language is not very clear.

The old law explicitly allowed any type of exploitation for one year prior to filing, but the new law only allows “disclosure." It will take the various courts several years before there is an agreed definition of “disclosure" as compared with the more explicit prior language of allowing any type of publication or disclosure of an invention.

In view of the lack of clarity in the new language, we are advising clients to file patent applications before publicly revealing inventions. Provisional patent applications are informal patent applications that are less expensive, and have a one-year life. These can be filed to achieve a filing date for an invention, prior to any publication or disclosure. We are recommending that clients take advantage of the provisional patent application process, to protect their rights while there is uncertainty in the new law.

Patents and copyrights are not the same - this warning only applies to patents. Only some in the jewelry industry do make inventions and file patent applications, and this notice is directed to such parties.

Attorney Peter Berger, of Levisohn Berger LLP, has been actively involved in the jewelry industry for almost 40 years, specializing in intellectual property (copyright, trademark, and patent law) as well as other legal issues. He has developed a special appreciation for how members of the industry integrate legal issues in their business activities. The New York-based firm may be reached at (212) 486-7272.

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