Wednesday, October 7 2020

When is it too late to file a patent application?

Traskbritt

Getting the timing right for filing a Patent Application can be tricky. While there are several factors that will bar you from pursuing a Patent if you file too late, it is also possible to file too early. For this reason, it is important to understand the significance of a filing date, what events can bar you from obtaining a filing date, and how to know if you are ready to file in the first place. 

 

The Significance of Filing an Application

For most of the history of Patents in the U.S., if two inventors filed patent applications for the same invention, priority (and therefore the opportunity to pursue a patent) was given to the inventor who could provide evidence that they were the first to actually conceive the invention, assuming they were diligent in reducing it to practice. 

However, as a result of the passage of the America Invents Act, priority is now given to whoever is able to file a patent application at the USPTO first, regardless of who was first to actually invent the invention. As a result, the filing date of a Patent Application is now the critical date of priority that can have a far reaching impact on the process of obtaining a patent. 

The priority date of a Patent Application is important because it determines what prior art is available to an examiner to use in a potential rejection of the Application. For example, art by a third party that has a publication or priority date after the priority date of the Application cannot be considered in a rejection of that application. Specifically, art with a later priority date cannot be said to anticipate an invention and obviousness of the invention must be viewed as what would have been obvious to a person of ordinary skill in the art at the time of the priority date for the Application, not what would have been obvious at a later date. 

Because of the crucial role of a filing date, there are certain precautions that should be undertaken to avoid trouble with your Patent Application. For example, it is important to consider filing the Patent Application before telling others about the invention such as investment partners or other companies. While it is true that a person cannot file a patent application for an invention unless they actually invented it, divulging certain information early may lead to bad actors trying to file an application for your invention before you are able. Countering these bad actors requires evidence, additional time, money, and unnecessary stress. 

Additionally, there is a risk that there may be insufficient evidence to show that the bad actors were not the actual inventors, leading to a total loss of a patent and, worse still, being prevented from making or using the invention should they obtain a Patent on the stolen invention. Furthermore, even if a bad actor does not outright steal your invention, if word gets out about your invention and another person or company also independently invented the same thing, they will be motivated to file an application as quickly as possible in order to obtain an earlier priority date over you; this would allow them to bar you from obtaining a patent for your invention even if they were not first to invent it. 

 

Deadlines for Filing a Patent Application

In addition to beating third parties in the race to the Patent Office, there are also several deadlines that apply to your own disclosures that, if not properly observed, can lead to you barring yourself from receiving a patent. First, a deadline is created one year after the first public disclosure of the invention. A public disclosure requires that someone (not necessarily the inventor) disclose to a member of the public a non-confidential communication that describes the invention in sufficient detail so as to enable one of ordinary skill in the art to make and use that invention. Such disclosures often occur through printed publications, such as in advertising material or in scientific journals. Verbal disclosures, such as those made during presentations at conferences, can also qualify. Once a public disclosure of the invention is made, the inventor has one year to file a patent application. If he or she does not, they will be barred from obtaining a patent for that invention. 

Second, a deadline is created one year after the invention is first used in public. While the inventor can use the invention for experimental purposes and not trigger the one year time bar, any public use by the inventor or any other who is not under a restriction or an obligation to secrecy by the inventor will trigger the beginning of the one year time bar. 

Third, a deadline is created one year after the invention is first offered to sell anywhere in the world. Note that it is not required that an actual sale be made to start the time bar. A mere offer to sell the invention will begin the one year clock regardless of whether the invention has actually been made or put into practice. As a result, these potential bars to patentability highlight the importance of filing an invention as soon as possible in order to avoid being barred from pursuing a patent for your hard earned invention. 

While speed is important, it is also crucial that the patent is not rushed to the point where the Application does not contain all aspects of the invention. In other words, it is important to make sure that the invention is past the “idea” stage. A patent application must explain the invention in such sufficient detail that a person of ordinary skill in the art could both make and use the invention, a standard often referred to as the “enablement” requirement.  On the other hand, this also means that an inventor, while needing to be able to describe all aspects of the invention in detail, does not need to go so far as to make working prototypes in order to file the Patent Application. 

 

Avoiding Art Before Prosecution

As stated above, a third party disclosure of prior art could potentially bar patentability of an invention if an examiner finds that the third party disclosure is sufficiently close to your invention in view of other prior art disclosures. Though you may feel confident that your invention is novel to the best of your knowledge, there still may exist art that could present a problem when trying to obtain a patent. To avoid being blindsided by this art during prosecution of the patent application, it may be a wise investment to have a professional, such as a patent attorney, conduct a patentability search to alert you to the existence of this prior art before you decide to sink cost into filing and prosecuting a Patent Application. 

If you have any questions about when you should file a Patent Application, want a patentability search, or if you need an immediate filing in order to avoid a statutory time bar, get in contact with one of our Patent lawyers at TraskBritt today. 

 

Article written by David T. Ostler