What issues should I be worried about if I hire a company to do a marketing feasibility study prior to filing a patent application?
1. Public disclosure - an inventor has one year from any public disclosure to file a patent application in the United Sates or Canada. If more than one year elapses, the inventor will be barred by statue from receiving a valid and enforceable patent. The US and Canada are the most liberal in this matter. Many countries and jurisdiction require filing prior to any public disclosure. Check with your attorney for more details.
2. Independent development - the US is a first to invent country. However the process for resolving contested inventorship can be very costly. Being the senior application on file is very desirable.
3. Scope of claim coverage - there are new inventions every day. Every invention is potential prior art that can limit the scope of the claims in your invention. If your invention is in a "hot" technology, you may want to consider establishing that priority date prior to market feasibility.
Ask your patent attorney to provide you with advice specific to your situation. In the meantime read up on provisional patent applications at www.USPTO.gov.
Answered on Dec 09th, 2010 at 5:58 AM