When people come up with clever ideas that create useful and possibly profitable ideas for new products, the urge to share the idea on one or more social media platforms can cause people to share details and possible drawings/photos of a prototype. The thought of showing your friends and family how you have created the next great thing and obtaining likes is too tempting.
Unfortunately, the past year I have had more than one client who shared their ideas online before contacting their IP attorney and filing a patent application. I know that your patent attorney is not the first person you call after your light bulb moment. But filing a simple provisional patent application would eliminate a lot of potential problems.
I usually caution clients on overusing provisional patent applications as they are only as good as the content described therein. The invention may not be completely developed in every detail. However, if an inventor has a reason to share the idea with the world, such as to tease a customer base regarding new products being developed, I recommend filing a provisional application, so it’s dated before you start posting the idea anywhere.
The first of my clients posted a photo of a prototype product in a particular forum where their customers who use their products typically share ideas, thoughts, reviews, and the like. In this case, a competitor saw the idea and created a competing version of the product and started offering it for sale before my client filed any application. Shortly after posting to the forum, my client brought me his idea and we filed an application in a matter of weeks.
Later, when the PTO examined our application, the examiner cited the competitor’s product with a first published date prior to our filing. I then spent a significant amount of billable time and effort to overcome the examiner’s rejection. The client did not realize the competitor saw his initial prototype and promptly created their version. This client learned a lesson the hard way.
In a second case, a client posted a photo of an initial version of his product on a social media platform was after he first created it. The client worked to improve the design before filing a provisional application himself. He then contacted me to create and file a utility application. Unfortunately, just about one year had passed from the posting of the first photo and the filing of the provisional application. The provisional application was sparse as the client did not include more than the bare minimum amount of information describing the invention.
When the patent was allowed, we realized that with minor additions, the invention could be much broader and apply to many different embodiments. In preparing a continuation-in-part (CIP) application and new claims, the initial design and its published photo came to light. It then took me significant effort to describe the broader invention to distinguish it from the initial version seen in the photograph. The CIP application was filed much later with more detail and a competitor who takes my client to court could argue the provisional application does not show enough detail to allow my client to claim priority back to its filing date.
Ultimately, we created applications that presented a narrative version of events in both cases that addressed the potential prior art problems encountered by the clients. I had to explain to the clients that these issues may become significant issues should their patents be enforced in court. Any enforcement action will be more expensive with these ancillary issues being litigated.
Of course, both situations could have been avoided had the client spoken to their patent attorney before posting on social media. I use these examples to explain to clients why they need to call us for a free phone consultation to discuss whether they have an idea worth pursuing and to recommend steps to take before posting anything to the internet. A brief call before you share anything will eliminate headaches later.