While patents provide great protections for inventions, there are stringent requirements in the patent process that inventors must heed to ensure that they don’t compromise their patent application. What are some of the common pitfalls that patent applicants should be aware of?

  1. Publicly disclosing an invention before filing a patent application.

Patent Filing Both US patent law and international patent laws regard public disclosure of an invention to be prior art, including instances when the inventor only shares the invention with just a handful of people. Inventors should exercise prudence by having their patent application on file with the US Patent and Trademark Office (USPTO) before revealing their inventions to any member of the public. A pending patent application lets the inventor make use of the “patent pending” label to protect his or her invention.

What qualifies as a “public disclosure” of your invention?

  • Publishing the invention in print or online.
  • Displaying the invention in a public setting.
  • Offering to sell the invention or use of it to another party.
  • Describing features of the invention to other parties.

Trade shows are particularly notorious for stopping inventors from receiving patent protection. This is why it’s imperative that inventors first file a patent application for anything that they plan to show or talk about at a trade show, in an article, on a website, in any dealings, or in any public medium. Until you file your application for patent, secrecy is recommended.

  1. Over reliance on non-disclosure agreements as a deterrent.

Inventors—especially small businesses and entrepreneurs—shouldn’t place their entire trust in a non-disclosure agreement. When violated, they provide nothing more than a breach of contract claim against the offender. The public disclosure, however, can’t be taken back and is likely to render the invention unpatentable. In addition, there might be nuances in NDAs that could backfire on inventors and their IP rights.

Patent law in the US does allow a limited 12-month grace period that protects an inventor from public disclosures being considered prior art against the same invention. But, “limited” is the operative word here. It shouldn’t be taken as ironclad protection. A patent may end up being invalidated because of statements or writings done in this supposedly safe period. To protect an invention’s patentability, filing a patent application is the best option.

If an inventor is expecting the possibility of a public disclosure, he or she should contact a patent attorney right away so they can have their patent application drafted and filed in time.

Life gets in the way sometimes, and many inventors may find themselves forced to discuss their work before they are able to file a patent application. The solution for this is filing a provisional patent application. This is an informal application, albeit also filed with the USPTO. Provisional patent applications allow up to a year to file an official, non-provisional patent application. Filing a non-provisional patent application formally starts patent prosecution, which may eventually lead to the issuance of a patent.

Inventors should keep track of the 12-month window of a provisional application and file a non-provisional patent application within this time. Provisional applications become useless once this period ends, and their accompanying protection expires. Inventors should also keep in mind the discounts offered by the USPTO to “small entity” or “micro-entity” status filers and find out if they qualify.

  1. Forgetting deadlines for international applications (12 months for utility patents, 6 months for design patents).

When they want to file for a patent in foreign countries, inventors best do it within 12 months of their filing in the United States (and 6 months for design patents).

There are different international filing treaties that impose different deadlines. Inventors must meet the appropriate deadlines to get priority based on their US filing.

Inventors don’t have to make any foreign filings, but they often make sense in terms of business strategy. For guidance on this, consult a lawyer specializing in IP law, specifically patent law, regarding international filing requirements.

For Patent Counsel, Call an Intellectual Property Lawyer Today!

If you need guidance with the United States patent system or help with an international patent application process, patent attorneys can help you obtain protection for your invention. They can help you file an application and guide you through the process until you receive a grant of a patent.

For legal services involving patents, trademarks, and other intellectual property rights, call us now at War Intellectual Property Law to speak with an experienced IP attorney.