Clients who take an active role in IP risk management ask me from time to time about the “dos and don’ts” of patent prosecution. Here’s an example of what can go wrong.
Suppose a U.S. consumer products company had a U.S. patented product. The product was designed, tested and manufactured in China. The patent application was filed in the U.S. about 11 months after U.S. sales began. Our U.S. law gives patent applicants up to a year in which to file a patent application. Ten years later the company sought to enforce its patent rights against a competitor only to find its patent was invalid because the company’s Chinese manufacturer immediately filed for a Chinese patent that was swiftly granted and public more than a year before the company’s patent application date. This made the Chinese patent (the nightmare) a prior invalidating publication against the company’s patent.