While patents provide the protection needed for innovation, there are some stringent requirements in the patent process that innovators must heed to ensure that they don’t compromise their patent application. What are some of the common pitfalls that invention patent applicants should be aware of?
Publicly disclosing an innovation before they file a patent application.
Both US patent law and international patent law regard public disclosure of the invention to be prior art, including instances when the inventor only shares the innovation 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 status lets the inventor make use of the “patent pending” label to protect his or her work to the extent to which the description of the invention and other patent information are detailed in the filed application.
What are some of the ways to harm your patent through public invention disclosure?
- 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.
Trusting too much in a non-disclosure agreement as a deterrent.
Inventors, especially small businesses and entrepreneurs, shouldn’t put their entire trust in the powers of a non-disclosure agreement. When violated, they have nothing more than a contract claim against the offender. The public disclosure, however, can’t be helped and is likely to lend their invention no longer patentable. In addition, there might be nuances in NDAs that could backfire on the inventors and their IP rights.
The 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 invention, but “limited” is the operative word here, so 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 better option.
In case innovators are expecting the possibility of a public information disclosure, they 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 their patent application. The solution for this is filing a provisional patent application. This is an informal application, albeit also filed with the patent office. Provisional patent applications provide an allowance of up to a year to file an official non-provisional patent application to formally start patent prosecution that may eventually lead to patenting. Inventors should keep track of the 12-month window of a provisional application and file a non-provisional patent application within this duration. Provisional applications become useless once this period ends and their accompanying protection expires. Innovators should also keep in mind the discounts offered by the US PTO to “small entity” or “micro-entity” status filers and find out if they qualify.
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, innovators best do it within 12 months of their priority utility patent filing and six months of their priority design patent filing. There are different filing treaties that impose varying deadlines. Inventors must meet them to get priority based on their US filing. Other IP foreign filing timelines are more forgiving, but for these patents, the 12-month deadline must be followed in order to keep the opportunity for foreign filing of a non-provisional patent application, and the six-month one for a design patent application.
Inventors don’t have to make foreign filings, but they often make sense in terms of business strategy. For guidance on this, they should consult a lawyer specializing in IP law, patent laws in particular, regarding international application requirements.
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If you need guidance with the United States patent system or help with international patent application process, patent attorneys can help you in your application for a patent and ensure intellectual property protection for your invention. They can teach you how to file an application at patent offices and assist you until you receive a grant of a patent and beyond.
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