Why Not Throw in the Design of the Kitchen Sink?

The first option is hazardous. In the wake of the U.S. transition to a 'first-inventor-to-file' patent system under the America Invents Act (AIA), companies seeking patent protection for new products have even more reason to preserve their patent rights before public disclosure or offer for sale. Under the AIA, the one-year grace period for filing has been limited and the risks of post-disclosure patent filings are still largely unknown. The importance of early filing was further highlighted in Hamilton Beach v. Sunbeam Products Inc., No. 2012-1581 (Fed. Cir. Aug. 14, 2013), where the Federal Circuit held that a foreign supplier's secret, pre-critical-date offer to sell a company's own design to the company (i.e., after the supplier would have manufactured it per the prospective instructions of the company) can serve as a disqualifying offer for sale. On the other hand, the USPTO has indicated that, post-AIA, a 'secret sale ' does not qualify as prior art.' (See AIA Examination Guidelines, 78 Fed. Reg. 11059, 11060 (Feb. 14, 2013).) So, companies should consider filing applications even before approaching suppliers about manufacturing their innovative products.

Unless a company already has a substantial IP budget, the second option may also be unpalatable. For companies seeking to protect multiple inventive aspects of their products ' functional, ornamental, or both ' USPTO and patent attorneys' fees associated with pre-sale, pre-marketing, and pre-manufacturing filings can be daunting. Indeed, such costs may be prohibitive for new commercial ventures, small companies, and independent inventors. And, if a to-be-protected product ultimately fails in the marketplace, the resources expended on early patent filings may be all for naught.