Wants to Protect Music Method

Dear Rich: I'm contacting you regarding IP patents for a product I have recently put into commercial format. What I am trying to protect is a unique pedagogical approach involving music and language. There is currently no commercial product that uses this system. I have used and developed my unique method over the last ten years After some research, my understanding is that I have a year to determine whether my product is commercially viable after applying for a provisional patent which I did this month. My question is: What constitutes evidence that a product is commercially viable in order to become eligible for a regular patent? I have been using the IP for the past 10 years and it is my primary source of income. Now that I have it in product format (an audio instructional CD for acquiring a creative skill) I would like to know how I can document the commercial use of it. Is it just through sales of the product? If so, how much constitutes viability? Can I use the classes that I teach using this IP as evidence of commercial viability? We're glad you're making money from your concept and we'd like to see you continue to do so. However, we're not sure there is a patent in your future. That's because the USPTO won't grant patents if the subject of an application has been publicly disclosed by an inventor more than one year prior to filing a patent application. If you've been using this method to teach for ten years, that would probably be a disqualifying public disclosure.
Determining commercial viability. Although we recommend determining commercial viability before filing a patent application -- it can save you thousands in fees -- it's not a prerequisite for patent protection. There are many ways to assess commercial viability for an innovation and in his book, Patent It Yourself, David Pressman lists over 60 factors that can make a difference such as cost, ease of use, ease of production, durability, convenience, novelty, etc.  Many of these innovation factors may not be applicable to a music-teaching system and you can probably get a relatively reasonable perspective by reviewing the music-teaching systems industry -- that is, the sale of instructional book, CDs, DVDs and apps. If you have the funds to have someone else review an innovation, two independent invention evaluation services considered reputable by Pressman are: the Wisconsin Innovation Service Center, and the I2 Innovation Institute. Otherwise, avoid invention promotion scams.

Copyright and Trademark. You can't stop others from using your publicly disclosed ideas but you can stop others from copying the way you express those ideas using copyright law -- for example, your books and CDs on the subject. And, if you can register the name of your system as a trademark, you can prevent others from using a similar name. You can't stop others from discussing the underlying principles of your method as we wrote about in a recent post.

When Will the 1-Year Grace Period for Patents End?

Dear Rich: I filed a provisional patent application this week. I've been selling my product that I hope to patent for the past three months. The new patent law ends the one-year grace period. So where does that leave me and my application? You should be fine, provided that you file your regular patent application within a year of the provisional filing. The aspect of the law that you're referring to doesn't go into effect until March 16, 2013, and only applies to patents filed on or after that date.
What about the one-year grace period? The one-year grace period -- which allowed applicants to obtain patents even if if they had been selling or had published their patent less than a year before filing -- will terminate (with some exceptions) on March 15, 2013. As David Pressman, author of Patent It Yourself, recently explained in his excellent analysis of the America Invents Act:

"The one-year grace period has been decimated so that any publication, public use, or offer of sale of an invention before an application’s actual filing date will bar the application. An exception: if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. However it is still unwise for an inventor to publish before filing since they will lose their foreign filing rights and another person may see the publication and file their own application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding."

Check out the article for more details, and for more on the AIA, you can read about the USPTO's implementation plans, and you can review a timeline for AIA implementation.