When to File a Patent Application
Today's guest blog comes from Kevin E Flynn, FLYNN IP LAW
One of the most frequent questions from an entrepreneur considering seeking patent protection for a new idea is when should the patent application be filed?
This simple question is actually three different questions.
A) What sort of innovation is a good candidate for the process of patent protection?
B) How far along in developing the idea should I be before we file a patent application?
C) What are the deadlines for filing a patent application?
Each of these questions merit a lengthy discussion, often keyed to a particular type of invention. The first I answer I provide, however, focuses on the deadlines for filing a patent application. In the US and elsewhere, to have any rights at all you need to file a patent application before another inventor files a patent application on that idea (i.e., you have to be the first to file). There is an advantage to moving quickly, but you have to be deliberate and careful in your pre-filing activities to make sure you haven’t made a disqualifying disclosure.
There are actually two major sets of rules regarding filing:
Rules for filing a patent in the United States
Rules for filing in a country that uses “absolute novelty”.
Many companies want to preserve an option to seek patent protection in Europe or other systems that use the stricter absolute novelty rules so for most clients, being aware of the absolute novelty rules in foreign countries is crucial.
Absolute novelty rules require a patent application to be filed in at least one patent system before the invention in made available to the public. Thus, at the time of the filing, the concept is not known to the public and has absolute novelty.
Absolute novelty rules vary a bit from system to system, but since Europe is a key market for American inventors, the European Patent Organization rules are key. In that system, an inventor loses absolute novelty when the idea is made available to the public by a written or oral description, by use, or in any other way before the filing date of the patent application (EPC Article 54(2)). A disclosure to even a single person who is not under any obligation to maintain the secret destroys absolute novelty. To preserve absolute novelty, inventors must use non-disclosure agreements (NDA) for manufacturing quotes, to obtain product from vendors or to even talk to potential customers.
The rules in the United States are more forgiving to a young company. In the United States you cannot seek a patent on an idea that was:
Described in a printed publication
On public use
On sale (even if the sale was under an NDA) or
Or otherwise available to the public.
This sounds very much like the absolute novelty rules. However, in the US, the patent law grants a one-year grace period to an inventor to file a patent application after the disclosures above. The law covering this concept is badly written, but the US Patent Office has declared that the one-year grace period applies to cover all of the activities listed above.
RULES TO LIVE BY
1) Try to live by the absolute novelty rules to preserve options
2) Be careful that US rules are stricter than absolute novelty with respect to offer for sale made under an NDA – AND this includes quotes from vendors to manufacture product for the inventor.
Keep good records of the actual offer of sale and all terms -- some preliminary discussions of possible pricing do not count.
Set a deadline to start work on a patent application about 9 months after the first offer for sale.
3) Consult with a patent attorney before doing anything that would end absolute novelty for an invention that you hope to patent.
4) Consult with a patent attorney even after you think you have blown absolute novelty as there are nuances and exceptions not covered in this blog post and there may be options in the United States and a few other systems that do not require absolute novelty.
Kevin works to obtain patents for young companies and to keep them from stepping on the patent rights of others. This calls for someone that is part engineer, part lawyer, part advocate, and part coach.
Kevin is very comfortable working directly with CTOs and CEOs in companies that do not have in-house lawyers and with the engineers that made the innovations.
He helps clients decide where to spend their money to get the most value while seeking patents in the United States and abroad. Then he works collaboratively with clients to create patent applications that are part required technical disclosure and part sales pitch to convert skeptical patent examiners into believers that this invention is special and merits the grant of patent rights.
Kevin Flynn FLYNN IP LAW