Is it too late to apply for a design patent after product sales?
Sellers of uniquely looking products face an age-old dilemma. Should they apply for a design patent first or sell the product and see how it goes? If you sell first, have you lost the ability to obtain a patent? How long after selling a product can you still file a design patent? There might be good news depending on your situation. Let’s delve into the possibilities for patenting products that are already for sale.
Need to file a design patent application promptly? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore working with us.
Don’t wait more than one year!
Always remember the 1-year grace period. US inventors have one year from the earliest date of public disclosure or sale to apply for US patents. Calendar the 1-year anniversary from the first time you showed your product to the public or made your first sale, whichever is earlier.
Do not, however, wait until the 1-year deadline to file. The USPTO operates on a first-to-file rule meaning that whoever files first, not whoever invents first, will have the right to obtain a patent.
Will your prior product sales be used against you?
Yes, you can expect that the USPTO patent examiner will use your prior product sales against you if you were selling your product online. How? Suppose you have been selling your products on Amazon. The examiner can find your Amazon product listing which typically shows a date first available. Assuming the images in the product listing look similar to the drawings in your design patent application, the examiner will issue an Office Action rejecting your design patent application.
Will it cost more to apply for a design patent after selling product?
Filing a design patent application after you have already begun selling product will be more expensive. As discussed above, your application will likely receive a rejection based on your past product sales if the examiner can easily find your online product listings.
To overcome this rejection, your patent attorney will need to prepare a special affidavit stating that the sales found by the examiner actually originated from you and that the earliest sales were within the one-year grace period.
Should you request Rocket Docket in a design patent application filed after product sales have commenced?
There are pros and cons to expediting examination of your design patent application. Let’s start with the benefits.
By selling product before applying, you have given competitors a headstart in copying your product. Savvy competitors may have noticed that your product listings omitted any patent-pending statements. In fact, you might already be dealing with knockoffs.
Submitting a Rocket Docket request can help speed up the examination of your design patent application by 1-2 years. Instead of waiting 18 to 36 months for the initial review, the examiner will review your application within a couple of months of the grant date of your Rocket Docket request. Assuming you prevail over all rejections, your design patent may be granted much sooner. You will then have the ability to stop competitors from selling copycat products.
Drawbacks include additional costs and the earlier timing of those costs which can impact cashflow. Those additional expenses include not only the Rocket Docket request, but also the forthcoming rejection that you will need to overcome with an affidavit.
Can you request Rocket Docket after filing a design patent application?
The good thing about the Rocket Docket program is that you can request it after the initial filing of your design patent application. It makes sense, therefore, to request Rocket Docket only when you have sufficient cash to respond to the forthcoming Office Action.
One option is to first file your design patent application so that you can promptly slap patent-pending on all your online listings and marketing literature. When you have enough money saved for both the Rocket Docket request and an Office Action response, move forward with expediting your design patent application.
