Product Launch Pitfalls Following the America Invents Act

The 2013 Consumer Electronics Show in Las Vegas had 3,300 exhibitors displaying an estimated 20,000 new products. Many will not be for sale for many months, but were previewed at the CES for public consumption. Harvard Business Review reports that successful product launches require entrepreneurs to perform market research and independent testing and to educate sales channels and consumers. A recent article in Inc. Magazine agrees.

Trade shows, market research, and consumer education all have one thing in common: public disclosure of the product design at issue. But, long gone are the days when a company could “preview” its product design at an annual meeting or trade show, tweak the design, launch its product months later, and still rely on the one-year grace period of 35 U.S.C. 102(b) to file design patent applications to protect its innovative work.

Under the “first-inventor-to-file” regime of the America Invents Act, effective March 16, 2013, public disclosure of a complete product design without filing for a design patent protection beforehand  may be giving that design away to competitors. While the AIA includes a limited grace period for certain disclosures, this grace period is a far cry from the pre-AIA one-year period that permitted public use or sale of a design prior to filing a patent application.

Under these new rules it seems likely that many more products at CES 2014 will be patent pending…that is design patent pending.