Thinking of filing a patent application? On top of having to make decisions about whether and what to file, you’ve also got a limited amount of time in which to file. If you’ve gone through the challenging process of deciding what is worth protecting, from both an innovation perspective and a business perspective, and decided you do indeed want to file, the last thing you want to hear is that you’ve waited too long and lost your right to file. Even once you’ve filed your first application (which is often a provisional), there are a number of decisions to make regarding whether to formalize provisionals and whether to file outside the country. This timeline provides an overview of the decisions you’ll need to make:
Notice how the timeline changes if you don’t decide to file until after you’ve made a public disclosure:
You’ll have set a new, 12-month deadline for filing any US applications and may have lost the right to file internationally. Now, you may or may not need to file patent applications, but ideally that would be an informed decision – not because you didn’t know that doing that beta test would mean you couldn’t file later!
Notice that at the moment, most applicants for technology patents won’t hear from the US Patent Office for years from the filing date. This means it’s particularly important for you to consider what the benefits are to filing an application – you want to be really clear on those benefits before making that investment.
Whether or not you decide to file any applications, keep an eye out for these deadlines to give yourself enough time to make educated decisions.
The two biggest, non-financial questions to ask yourself in deciding when you want to file your patent are 1) could you have competitors working on a similar invention and 2) when did you first tell anyone about your invention?
Every day you put off filing your patent application is another day someone else has to complicate your efforts to get a patent by filing for a patent on the same or a similar invention. That’s because the date on which you file that application plays a big role in defining what kinds of documents the Patent Office can use in rejecting your application, which ultimately impacts how broad or narrow your patent rights will be and how tough a fight you’ll have to get those rights allowed.
Even if you are convinced that no one else on the planet is working on this invention and that you won’t have to worry about prior art, you may still want to file that application sooner rather than later. As we’ve discussed before, if you make a public disclosure of your invention, you’ll have limited the amount of time you have in which to file that application.
While it’s all well and good to say that you ought to file sooner rather than later, you’ll need to balance these factors against your particular resource constraints. In some scenarios, you may be better off deferring detailed disclosures until you can raise the funds to file an application – or getting coaching from your attorney as to what not to say in your disclosures to others. Alternatively, you may need to make the business decision to gamble that what you’ve got is so innovative that no one else is going to come up with a similar invention before you can file your application. Regardless of your company’s particular situation, keeping these timing factors in mind will help you make sound decisions about your patent strategy.
As an inventor, it’s not surprising that you want to tell others about your invention, especially if your company is releasing new products or functionality based upon it. For example, you may display a poster and an abstract at a conference, send a marketing team off to a trade show, or give a talk at a networking event. However, in doing so, you may have just unintentionally and permanently voided your right to a patent!
One of the most critical things to understand about patents is how disclosures can impact your patent rights, regardless of whether you are an inventor, an engineer, or the CEO of the next hot startup. Mishandling your IP in the early stages of a product launch can create a long-term risk that could complicate your efforts to win a patent, and potentially even kills financing or licensing deals for many years to come.
This article gets into some of the risks around the issue of disclosure. After we discuss what can go wrong, I’ll cover the best approaches for prevention in Part II.