Quote:
Originally Posted by Niks  I'm currently looking at adding a product to my store which has been handmade in the US, and I have not come across anything like it here in Australia. Nor do there seem to be any others like it in the US.
I am looking at distributing this product in Australia as well as selling it myself. We've recently been discussing patents, and the lady who makes them is looking into it in the US and will also consider a patent for Australia.
From what I have read, there can be in an issue if the product has been sold prior to gaining a patent. The product has been sold in the US for some time now, and she has had a few little orders from Australia here and there.
My question is - shall we hold off selling the product in Australia until we have looked into it more?
- How long does it take to submit the work and get 'patent pending' on something?
- Is it likely to make a difference if we do start selling them in Australia (considering they have already been sold in the US)
It's a handmade product (fabric + sewing), so could quite easily be copied by others, but the concept/idea is really quite unique.
Thanks in advance for your help  |
Hi Niks - to start with - the disclaimer - I am
not a patent attorney so this is all for information purposes only and not advice. I work in intellectual property so have a working knowledge of the subject and hope this assists.
A patent by definition must be 'new' - so you are correct, there can be issues in obtaining valid patent protection if there has been public disclosure. Honestly, from the brief information you have included it sounds like it may be 'too late' - but to offer some further information for consideration.
A patent would generally apply to a device, substance, method or process that's inventive (or, in Australia could be innovative rather than fully inventive) and is useful. If the product is new in terms of its appearance (rather than its 'technology' or 'way it works') then a design (or in the US it is a design patent) might be the more appropriate form of protection - however, again the product needs to be new. A common question to help determine if patents are the right area to be considering that is asked is "What is the problem that your invention solves, and,
how does it solve those problems?"
In
select circumstances it's possible (at least in Australia) to file a patent application after disclosure - but even then I believe there are time frames imposed from the 'first' disclosure - and it's not set up to allow for late filing of applications just because a person didn't realise they should have done it sooner. Depending on
when the product was first disclosed in the US it might be worth double-checking their laws on first disclosure to timing of application in case there's still a chance.
If it turns out to be viable in the USA then it would be encouraged she seeks the advice and assistance of a patent attorney in the US to file for her - they are complex applications and often when self-filed the application doesn't eventuate to appropriate protection.
Hypothetically, if there was still time to file in the US this will effectively set off a clock to start ticking down on the time available to take the patent internationally. There is an international patent system (search on PCT Patent) which is more or less based on the first application (e.g. USA) and can then be 'extended' to a lot of other countries - again within a certain time frame.
As noted, it
sounds like it's too late to go down the patent path with this product - to be considered 'new' means that "...the invention has not been publicly disclosed in any form,
anywhere in the world." So, even if there hadn't been use in Australia yet or disclosure specifically in Australia, the use and sales in USA would mean it's not viable here either.
Having said all of that - depending on what is actually disclosed about the product to the public, there may be properties that have not actually been disclosed and therefore there might still be a 'part' of the overall product that could achieve patent protection. I think she will really need to speak to a patent attorney in the USA, to whom she can fully disclose all aspects of the product - what it does/how it works etc for them to determine if there's any part that might still be patentable.
Otherwise, she may need to determine whether any other 'protection' is available - purely for example - copyright on any sewing patterns; trademark on the 'brand name' etc.
I would hold off really pushing the product in Australia until she has got absolute confirmation as to whether there is still a possibility of any patentable properties within the product or decides that it's "not worth it" to her to go up that road. Patent protection can be costly (especially in more than one country) and sometimes people decide that commercially it's simply not worth spending that sort of money.
If it assists - the US Patent office is only at
www.uspto.gov
Good luck!
Patent for US product 
