PITCH PERFECT – ARE YOU FORFEITING PATENT PROTECTION WHEN YOU PITCH YOUR IDEA TO POTENTIAL INVESTORS?

Since the debut of Shark Tank in 2009, a number of similar contests and competitions involving entrepreneurs publicly “pitching” their idea or invention to a group of people have arisen across the country. The general premise is that a select number of entrepreneurs have a limited amount of time (say 3 minutes) to pitch their idea to those in attendance. At the end of the evening a panel, or in some cases all those in attendance, vote for their favorite and awards are given for the best pitches. In some cases, seed money is awarded to the winning entrepreneurs to help move their project forward.

For the entrepreneur, making such a public pitch before filing an application for patent protection is potentially devastating. Securing patent protection for an invention provides a huge competitive advantage to a start-up – the ability to exclude all others from making, using, importing, selling or offering to sell your patented invention for up to 20 years. In many cases, without proper patent protection, the barriers to entering the market are so low that good ideas can be legally copied by those with market influence leaving the entrepreneur/inventor empty handed. The best way to avoid such a devastating loss – file at least a provisional patent application that provides “full disclosure” of your invention prior to making your pitch.

Prior to the America Invents Act (AIA), which took effect on March 13, 2013, inventors had a one-year grace period after a public disclosure to file their application for patent in the United States before that disclosure would be considered to be prior art barring issuance of a patent. The biggest change in the AIA was going from a “first to invent” system to a “first to file” system. Accordingly, if two patent applications are filed after March 13, 2013 claiming the same invention, the USPTO does not consider who was the first to “invent”, but rather who won the race to the Patent Office by filing first. An inventor who publicly pitches an idea before filing for patent protection runs the risk that someone in the audience will take that idea, modify or expand on it, and file for patent protection first, effectively precluding the pitching inventor from securing patent protection.

Another potential problem that may arise when an inventor pitches before filing is the subsequent re-disclosure of the invention by a third party. Consider the following common scenario – Inventor discloses her idea at a Pitch Competition on December 22, 2016. A third party who was in attendance presents his “improvement” to the original pitch to potential investors on July 10, 2017. Inventor files her provisional application on December 21, 2017. One would think that the one-year grace period clearly applies under these circumstances. However, the answer, as is often the case in the law, is not so clear cut.

Under the AIA, the inventor’s ability to overcome the July 10, 2017 third party prior art is significantly limited. First, in order to avoid the third party prior art, the inventor must first prove that the third party did indeed obtain the information form the inventor. If third party was in attendance at the December 22, 2016 presentation, proof of that may not be too difficult. However, as is often the case, the third party may have received the information indirectly such as from another person who was in attendance. As the link to the original presentation becomes more distant, it becomes more difficult to prove the third party’s disclosure was obtained from the inventor. If such a situation arises, affidavits must be prepared and filed with the USPTO during the prosecution of the patent application, adding significant time and cost to the process of obtaining a patent.

All of this can be avoided by simply filing an “appropriate” provisional application before the pitch is made. For the application to be “appropriate”, it must include a written description that enables a person of ordinary skill in the art to make and use the invention. Thus, while a provisional application can be a useful tool for establishing an early filing date, simply filing academic papers, white papers, inventor notes or anything else that may be lying around does not necessarily provide protection. Therefore, when filing a provisional application, it is a good idea to seek the assistance of a registered patent attorney or agent who is experienced and familiar with the written description requirement of the USPTO.

To further complicate the one-year grace period, it can often times be difficult to establish just exactly when the grace period begins. Clearly, pitching your invention at a pitch completion attended by the public would trigger the start of the grace period. But looking deeper, was there some other activity that you engaged in earlier that may have triggered an earlier start to the grace period? Has there been another earlier “public” disclosure of the invention or an “offer to sell” the invention? There are a variety of risks associated with reliance on the one-year grace period that make it easy for an inventor to misjudge the actual beginning and end dates of the grace period.

Lastly, if you have global aspirations for your invention (which you should), most other countries have no such grace period, and such prior public disclosures are considered to be an “absolute bar” to obtaining patent protection. Australia and Canada operate under a 12-month grace period similar to the United States. Japan, Europe and the UK operate under a 6-month grace period, but under very limited circumstances. The World Intellectual Property Organization (WIPO) maintains a  for a number of countries throughout the world. The filing of an appropriate US provisional application prior to any public disclosure as discussed above effectively gives a one-year grace period from the date of filing to the inventor for purposes of pursuing foreign patents. A knowledgeable patent attorney will be able to devise a filing strategy to best fit the needs of any inventor.

Are you about to pitch your idea to potential investors and/or the public in a pitch competition and concerned about protecting your patent rights? If so, contact us to see how we can help BEFORE you pitch and potentially compromise your patent rights.