Fogarty IP Fogarty IP 2026-08-10T13:32:09Z https://www.fogartyip.com/feed/atom/ WordPress /wp-content/uploads/sites/1605470/2022/05/cropped-fogarty-site-icon-32x32.png On Behalf of Fogarty IP <![CDATA[How early sales can impact patent protection]]> https://www.fogartyip.com/?p=254493 2026-08-04T13:33:28Z 2026-08-10T13:32:09Z The on-sale bar This is a rule under federal patent law where a person may not obtain a patent if the invention was publicly used, offered for sale or made accessible to the public before the filing date. To see if the bar applies, courts generally try to answer these questions:
  • Was the product a subject of a commercial offer for sale?
  • Did the invention have a working prototype or detailed technical drawings that indicated it was ready for patenting?
The on-sale bar is meant to prevent inventors from waiting too long to file a patent after commercially exploiting an invention. If an invention meets the conditions above, that prior activity may block the United States Patent and Trademark Office (USPTO) from granting the patent.

Common pitfalls to watch out for

While you may not explicitly offer your product for sale or public use, there are other ways you can prompt the on-sale bar without knowing. Many business owners think a confidential sale of their invention under a Non-Disclosure Agreement (NDA) is safe. In reality, even a private commercial sale can trigger the bar. Additionally, providing your product to a customer for testing can be seen as a sale if money changes hands or if the primary purpose is not strictly experimental. Even presenting your invention at trade shows and conferences can inadvertently cross the line from pitching it to offering it for sale.

Understanding the one-year grace period

The U.S. generally provides a year-long grace period from the first offer of sale to file your application. However, this may only apply in Texas and across the country as many foreign countries have absolute novelty requirements. If you sell your invention in the U.S. today, you may lose the ability to patent it in Europe or Asia immediately, regardless of the one-year rule.

Protecting your innovation

The on-sale bar serves as a strict reminder that the window for patent protection is narrow and easily compromised. If you think your invention may be close to market, filing a provisional patent application early can prevent business development from blocking your ability to secure protection. A lawyer can audit your commercial activities to help ensure your filing strategy aligns with your sales goals.]]> On Behalf of Fogarty LLP <![CDATA[Patent vs. trade secret: What is right for your small business?]]> https://www.fogartyip.com/?p=254480 2026-07-02T07:17:16Z 2026-07-10T07:14:55Z Many Texas small businesses thrive on innovation, from unique manufacturing processes to proprietary software. However, many CEOs wonder how to best protect their products and ideas. Two of the most common paths for safeguarding intellectual property are filing for a patent or keeping the idea as a trade secret. If you find yourself in this situation, choosing the right protection is a foundational decision for your business. Understanding the benefits, costs and risks of patents and trade secrets is crucial to securing your competitive edge.

The basics of patents 

A patent is essentially a years-long legal monopoly to your product, granted by the United States Patent and Trademark Office (USPTO). Depending on the type of patent you choose, you generally have protection for 15 to 20 years. As a small business owner, a patent can provide you with market exclusivity as it stops competitors from legally copying, making or selling your invention. Additionally, a patent is a tangible asset that you can use to secure bank loans or attract investors. However, patents can be expensive to file and maintain, especially when you account for legal costs, translation expenses and ongoing fees over the years. In exchange for legal protection, obtaining a patent also requires a detailed public disclosure of your invention, including the technical secret that makes it unique.

Protection through secrecy

A trade secret refers to exclusive information that has economic value because it is confidential. This can include your customer database, a product formula or a profit margin. Unlike patents, trade secrets do not need government filing or maintenance fees and do not expire as long as they remain classified.   In Texas, your trade secrets also have protection under the Texas Uniform Trade Secrets Act (TUTSA). Under this state law, courts have a duty to preserve your business secrets if you have to sue someone for stealing them. However, you cannot safeguard your trade secrets if a competitor independently invents the same thing or reverse engineers your product on their own.

Considerations for small business owners

When deciding which path to take, one thing you may want to look at is its visible appearance. If someone can figure out your secret just by looking at the product, you may want to safeguard its look and aesthetic through a patent. Another factor to consider is your product’s lifespan. If the technology becomes obsolete in five years, you may only need protection for that time period. A trade secret may be enough to outrun the competition. Lastly, since patent applications usually take two to three years, you may want to consider if your business has the capital to sustain that process. Giving these some thought can help you determine if a patent, trade secret or a combination of both is best for your business.

Shielding the future of your business

When choosing the right intellectual property protection, it is best to analyze your product specifications and long-term goals. Partnering with a lawyer can help you create a strategy that fits the needs of your business.]]> On Behalf of Fogarty LLP <![CDATA[Should you patent your invention or keep it secret?]]> https://www.fogartyip.com/?p=254478 2026-06-14T14:54:14Z 2026-06-14T14:54:14Z For Texas companies, the choice between a patent and a trade secret can affect product launches, licensing deals, investor talks and market position. The better path depends on what you built, how the business uses it and whether others could figure it out on their own.

Ask whether others can copy it

Some inventions cannot stay secret once customers see the product. If a rival can buy it, study it and understand how it works, secrecy may not protect the company for long. A patent may help in that situation. The U.S. Patent and Trademark Office (USPTO) says a patent gives the owner the right to exclude others from making, using, offering for sale, selling or importing the invention in the United States. That right can support license deals, investor value and a plan for dealing with copycats.

Protect what stays inside the business

Trade secret protection may work better for information that outsiders cannot easily find. That may include formulas, source code, testing data, pricing methods, production steps or internal tools. The USPTO describes a trade secret as information with value because others do not generally know it and the owner makes reasonable efforts to keep it secret. Those efforts must show up in daily business practices. Companies may need access limits, nondisclosure agreements, staff training and clear rules for vendors.

Know what a patent gives away

A patent can give a company formal rights, but it also requires public disclosure. That tradeoff can make sense when the invention will be easy to copy, hard to hide or useful in a licensing program. The risk is that the filing may teach rivals too much. If the patent claims do not cover the most valuable details, competitors may learn from the disclosure and design around it. That can weaken the business value of the filing.

Know what secrecy cannot do

A trade secret avoids public disclosure. It may last for years if the company protects it well. Still, secrecy has limits. Protection can disappear if the information becomes public. It can also lose value if an employee misuses access or a competitor discovers the same method lawfully. The risk grows when contractors, suppliers or joint development partners need to see sensitive information.

Match the choice to the business plan

This decision should fit the company’s goals. A company may patent the visible parts of a product while keeping production methods or internal data secret. Another company may skip patenting when speed, secrecy or long-term control matters more. A thoughtful patent filing strategy should consider product life, enforcement cost, licensing goals, investor needs and competitor behavior. The right answer may vary across product lines, even within the same company.

Make the call before disclosure forces it

Once a company shows an invention to customers, investors, vendors or the public, its options can narrow quickly. Before that happens, decide which parts need patent protection and which parts should stay confidential. A clear review before launch can protect value instead of letting a rushed rollout decide the company’s intellectual property strategy.]]> On Behalf of Fogarty IP <![CDATA[What should you know about patent infringement?]]> https://www.fogartyip.com/?p=254470 2026-05-14T09:57:49Z 2026-05-14T09:57:49Z What counts as patent infringement? Patent infringement happens when someone creates, utilizes, distributes or brings into the country a patented invention without authorization from the patent owner. This can happen in several ways. Direct infringement is the most straightforward type. It is when someone creates or uses a product that's identical or substantially similar to a patented invention. Indirect infringement is trickier. It includes inducing others to infringe on a patent. It also covers contributing to infringement by supplying components of a patented product. You might think that making minor changes to a patented design would keep you in the clear. That may not always be the case. Courts often look at whether the allegedly infringing product performs the same function. They might also check if it works in the same way. They also examine if it achieves the same result. This is known as the doctrine of equivalents. It can catch you off guard if you are not careful.

How can you protect yourself?

If you hold a patent, monitoring the market for potential infringement should be part of your strategy. Consider conducting regular searches for related products. You may also want to keep detailed records of your invention's development. Documentation can be invaluable if you need to defend your patent rights later. Before launching a new product, you might want to conduct a freedom-to-operate search. This helps identify existing patents that could pose problems for your invention. If you discover potential infringement, it is essential to remember that you have options.

The bottom line

Patent infringement is a serious matter that requires careful attention. Whether you are protecting your own innovations or ensuring you are not stepping on someone else's intellectual property rights, staying informed and proactive is your best approach. When in doubt, consulting with a qualified patent attorney can help you navigate these complex waters.  ]]> On Behalf of Fogarty IP <![CDATA[Best practices when transitioning to new outside patent counsel]]> https://www.fogartyip.com/?p=254469 2026-04-20T15:39:15Z 2026-04-20T15:33:32Z Switching patent firms mid-prosecution puts your entire Intellectual Property (IP) portfolio at risk. Active cases can face delays. Critical deadlines can slip through the cracks. Years of prosecution strategy can disappear if files do not transfer completely. Texas businesses managing complex patent portfolios face these dangers every time they change outside counsel. One misstep can cost you patent rights you spent years building.

Why companies change patent firms

Companies change outside counsel for many reasons. Expertise discrepancies, cost or business shifts. A firm that handled your first U.S. patents may not have the technical know‑how for semiconductors or the experience needed for international filings. If you do not spot those issues early, you risk weaker claims, abandoned applications and missed chances to protect innovations outside the country.

File transfer and continuity risks

Switching patent firms can weaken your IP portfolio. The United States Patent and Trademark Office (USPTO) will not recognize new counsel until it receives proper authorization, and delays can cause missed Office Action deadlines. Incomplete file transfers can leave your new firm without important prosecution history, prior‑art searches and correspondence that shaped your claims.

Critical steps during the transition

Several actions help keep things running smoothly when changing patent firms across Texas, Colorado and nearby states:
  • Identify all pending patent applications, upcoming fee deadlines and active matters.
  • Obtain complete files from the old firm, including correspondence, amendments, prior‑art searches and strategy notes.
  • Confirm any required foreign‑filing licenses and track related international deadlines (see 37 C.F.R. § 5.11).
  • Set up direct communication between outgoing and incoming counsel so they can answer strategy questions quickly.
Skipping these steps can weaken patent protection or lead to abandoned applications that competitors can exploit.

When focused legal experience matters most

Patent work in highly specific fields needs attorneys with technical backgrounds and deep USPTO experience. A firm with years at major IP practices can handle complex cases and maintain consistent global strategies. The difference between a smooth transition and costly disruptions depends on whether your new counsel quickly grasps your technology and history. Your patents represent years of innovation that deserve protection.]]> On Behalf of Fogarty IP <![CDATA[Is a provisional patent application necessary before the product launch?]]> https://www.fogartyip.com/?p=254467 2026-03-10T13:19:34Z 2026-03-10T13:19:34Z What a provisional patent application offers your startup A provisional patent application is like saving your spot in line at the patent office. Think of it as a temporary claim while you work out all the final details. Unlike a regular patent application, it does not need lots of legal paperwork or detailed claims. Instead, you just describe your invention well enough to show what you have created. This simpler process costs less money and takes less time to prepare, making it perfect for smaller companies with limited funds. Crucially, this provisional application gives you something incredibly important: a priority date. This date proves you invented your technology first, which is a huge deal if someone tries to steal your idea later. You also get a full 12 months to make your invention even better, test it with customers, and prepare a stronger, regular patent application.

The 12-month window creates smart opportunities

In essence, your provisional application gives you a whole year to make important business decisions. During this time, you can:
  • Improve your AI technology and add new features.
  • Test your product with real customers and get their feedback.
  • Look for investors and show them how much potential your product has.
  • Adjust your patent claims after checking out what your competitors are doing.
  • Figure out if getting a full patent makes financial sense for your business.
This extra time is vital for new companies that need to confirm their technology works and has a market before they commit to the entire patent process. Meanwhile, your priority date stays locked in, protecting your position.

Public disclosure and the "on-sale bar" can threaten your rights

Here is where many companies make expensive mistakes. Showing your AI product publicly or offer it for sale before filing any patent application could permanently lose your patent rights. The law sets strict deadlines once you reveal your invention or put it up for sale. This rule, called the "on-sale bar," means you usually lose your chance to get a patent if you wait too long after going public. Fortunately, a provisional application protects you from these timing problems. File it before you launch your product, present at conferences, or even talk to potential customers. Your filing date establishes your rights before anyone else sees your invention.

Protecting your innovation starts with smart timing

For companies in Texas developing AI technology, a provisional patent application offers the perfect mix of protection and flexibility. You secure your rights right away while still having the freedom to refine your business plan, attract funding, and confirm your product fits the market. Ultimately, this 12-month period changes patent filing from a rushed decision into a smart advantage that helps you achieve your business goals.]]> On Behalf of Fogarty IP <![CDATA[How does fair use apply to software APIs?]]> https://www.fogartyip.com/?p=254464 2026-02-06T10:25:42Z 2026-02-06T10:25:42Z How and why you use the API determines fair use Courts consider four factors when deciding fair use: purpose, nature, amount used and market impact. If you're repurposing an API for a new function that doesn’t harm the original’s market, fair use might apply. However, if your use mimics the original too closely or serves the same market, that protection quickly falls apart.

The Oracle ruling doesn’t protect most business use cases

In Google v. Oracle, the Court ruled in Google’s favor because Android transformed how the Java API was used. It wasn’t a substitute for Oracle’s product. Most business use cases aren’t that transformative, especially when they compete with or replace the original software, and that makes fair use a risky fallback.

Copying the structure or naming increases your legal risk

Even without copying implementation code, using the same structure, sequence or naming can still lead to infringement claims. Courts don’t just look at the code; they examine the design and organization of the API itself. That’s where companies often get blindsided.

If it’s going to market, it’s time to get advice

Internal prototypes rarely trigger review, but commercial use does. If your team plans to build with or around someone else’s API, an experienced intellectual property lawyer can assess risk, recommend alternatives and keep your product timeline from stalling over preventable legal issues. A quick gut check now can save you from cleanup later.]]> On Behalf of Fogarty IP <![CDATA[5 patent prosecution risks in fast-moving industries]]> https://www.fogartyip.com/?p=254463 2026-01-19T12:19:31Z 2026-01-19T12:19:31Z 5 patent prosecution risks in fast-moving industries Many fast-moving industries thrive in Texas. Semiconductors, energy technology, advanced manufacturing and medical devices all move from concept to market at speed. In your company, you may feel constant pressure to ship, scale and stay ahead. Patent prosecution can support that momentum or undermine it if handled without strategy. The risk comes from filing too fast without protecting long-term business value.

Speed without strategy creates exposure

When your teams move quickly, patent decisions often happen in parallel with product development. In Texas, that speed can mask early ownership and inventorship issues, especially when work is spread across affiliates, contractors or acquired entities. If filings do not match how your business actually operates, gaps appear. Those gaps can limit flexibility later when you expand, license technology or raise capital. You also face global pressure. Many Texas companies may sell nationwide or overseas. Early U.S. filings can trigger foreign filing license rules and a strict 12-month priority deadline. If your company rushes or overlooks those steps, you may lose rights outside the U.S. before you realize it.

Where patent prosecution breaks down

When companies move fast, the same prosecution risks surface again and again. You may not see them at filing, but they tend to appear when the stakes are higher. Common risks include:
  • Filing claims too narrowly to meet launch timelines
  • Creating prosecution history that weakens enforcement later
  • Letting products evolve beyond what the patent actually covers
  • Missing priority or foreign filing deadlines as operations scale
  • Allowing portfolio management to lag behind business growth
These issues are rarely intentional. They arise when companies treat prosecution as an administrative task instead of a strategic function tied to revenue and risk.

The cost of fixing mistakes later

Once a patent is granted, options narrow. Correcting scope issues or ownership problems can be expensive and uncertain. Texas-based companies often face early scrutiny from competitors and potential partners. A weak portfolio can limit your leverage before any dispute begins. Strong prosecution helps you avoid problems rather than react to them.

Built to move fast without losing ground

You do not need to slow innovation to protect it. You may benefit from patent counsel who understands how fast-growing Texas companies operate and how prosecution choices affect future value. When your filings align with your business strategy, patents support growth instead of becoming a hidden liability.]]> On Behalf of Fogarty IP <![CDATA[How assignment agreements protect your proprietary rights in Texas]]> https://www.fogartyip.com/?p=254462 2025-12-16T09:48:00Z 2025-12-16T09:48:00Z You hire a talented engineer who develops a groundbreaking invention using your company's resources. Months later, they leave and claim ownership of that creation. Without proper documentation, you could lose rights to something your business helped build. Unfortunately, this scenario happens more often than you might think. That's why understanding your proprietary rights is the first step toward preventing this situation.

Understanding your proprietary rights

Proprietary rights cover valuable assets your company owns. These include trade secrets, inventions, creative works and specialized processes. Naturally, when employees or contractors create something during their work, questions about ownership can arise. As a business owner, you need clear boundaries to protect what belongs to your company. Keep in mind, though, that simply creating these assets doesn't mean you automatically own them. You still need a legal process to secure these rights.

How rights transfer to your business

Here's the reality, rights don't automatically belong to your company just because someone works for you. In fact, Texas law requires proper documentation to transfer ownership. This is exactly where assignment agreements become essential. These legal tools move intellectual property rights from individuals to your business. But what exactly are these agreements, and how do they protect you? 

How assignment agreements work

Simply put, an assignment agreement is a contract where employees, freelancers or contractors transfer their invention rights to your company. This document clearly states that any work created during employment belongs to the business. In Texas, these agreements must meet specific requirements to hold up in court. With that in mind, here are the key elements your agreement should include:
  • Identify all parties: List the names of both the company and the individual signing the contract.
  • Describe the rights being transferred: Spell out exactly what inventions or creations the agreement covers.
  • Include proper consideration: Provide something of value, like employment or payment, in exchange for the rights.
  • Use clear language: Write the agreement in plain terms that everyone can understand.
Ultimately, a well-drafted agreement prevents disputes before they start. To make sure your documents meet all legal standards, consider working with a qualified attorney.

Create strong agreements with legal help

At the end of the day, protecting your proprietary rights requires more than a template from the internet. Each business has unique needs that demand customized solutions. An experienced patent attorney can help you draft assignment agreements that comply with Texas law and federal regulations. Don't leave your company's innovations vulnerable. Take action now to secure what you've worked hard to build.]]> On Behalf of Fogarty IP <![CDATA[3 common intellectual property mistakes that businesses make]]> https://www.fogartyip.com/?p=254461 2025-11-24T15:45:39Z 2025-11-24T15:45:39Z Neglecting IP protections Some businesses assume that what they create will receive automatic rights to the IP, such as:
  • Patents: It protects new inventions that can be used in industry, such as chemical formulas, machines or technical processes.
  • Trademarks: It protects names, logos or designs that show customers your products or services are different from others.
  • Copyrights: It protects creative works like books, music, software code, photos and paintings that exist in a physical or digital form.
  • Trade secrets: It protects confidential business information such as recipes, production methods, customer lists and pricing plans.
Without these, your business risks having its ideas copied or facing legal disputes with competitors.

Missing elements in independent contractor agreements

IP ownership often surprises business owners who believe that the company automatically owns everything created by their team. But this is not always the case. Work made by an employee as part of their job usually belongs to the company. But when a company hires independent contractors such as freelance designers, software developers or marketing consultants, the contractors usually keep ownership of their work unless a contract clearly transfers it to the company. Without a clear agreement, a contractor’s work might legally belong to them rather than the business. Many employment and contractor contracts do not clearly address the IP concerns and when this happens, disputes over ownership can appear if an employee leaves or after they have finished working on a project.

Revealing innovations before securing protections

In the United States, revealing an invention to the public without filing a patent application within one year can result in the loss of patent rights. This begins when the invention becomes public through presentations, publications, sales or detailed discussions at trade shows. After this period, patent protection is no longer available. Public disclosure can occur in ways that are not immediately obvious. For example, demonstrating a product at conferences or running beta testing programs can trigger this one-year period. If your business has plans to unveil a project, enlisting the help of a lawyer familiar with IP laws can provide you with guidance on the subject and help you further protect the best interests of your business.]]>