A recent post on IPWatchdog got me thinking about this issue again. While I agree with the sentiments made there, I decided to add my own cautionary thoughts to the discussion.
One question that inventors often face is when to file a patent application. Should they file an application as soon as they are reasonably sure of the details of how the invention can be made and used, or should they wait until all of the various details have been worked out? Since the US is a first to invent country, it doesn’t matter when you file the patent application, right?
My answer to this question is that a patent application should be filed sooner rather than later.
First to Invent
Many inventors think that their invention is extremely unique. It is simply not possible that anyone else has ever thought of it. They have even searched the Internet and not found their idea. Therefore, they have plenty of time to file a patent application.
The truth is that our current societal needs and problems and our collective understanding of scientific principles lead many people to seek solutions to the same problems with the same basic understandings of the potential solutions at the same time. And generally, there are only a finite number of solutions to these problems. Think about the biggest perceived problems in our society today. How many inventors are working on solutions to the swine flu or to the energy crisis of the last few years?
While it is true that the US still has a first to invent patent regime, this only benefits an inventor who can prove that he was actually the first to invent. This means that documentary proof is needed to demonstrate earlier invention. Proving prior invention can be especially difficult and expensive in an interference proceeding. These proceedings are basically administrative trials within the PTO to prove who was the actual first inventor if two or more parties have both filed a patent application claiming the same invention. The party that has the most convincing evidence in a form that is persuasive often prevails in such proceedings, regardless of whether that party was the actual first inventor. Laboratory notebooks, witnessed drawings and sketches, and other documentary proof is vital in such a proceeding.
One Year Grace Period
Another reason that many inventors choose to wait to file a patent application is that the US permits a one year grace period after an invention has been disclosed publicly or offered for sale before a patent application must be filed. Leaving aside the fact that most foreign jurisdictions require absolute novelty, there are other reasons not to use the grace period.
First, when does the grace period actually begin? If an inventor creates a prototype for the purpose of testing it, does the clock begin to run on the first public test? What if he tells someone about the invention and they offer to buy the product once the inventor has sufficient quantity? What if the inventor shows plans for the invention to potential investors or business partners or others?
The law does permit some sort of period prior to the one year grace period clock beginning for testing and making changes to the invention to determine whether it works for its intended purpose. In the context of offers for sale, the Supreme Court has stated that the clock begins to run once the invention is “ready for patenting”, whatever that means. Finally, if third parties are subject to confidentiality or non-disclosure agreements, this should keep the clock from running because these are not “public” disclosures.
But can an inventor be assured of exactly when the clock begins to run? A safer course of action is to file the patent application earlier rather than later.
In general, an invention may be awarded a patent if it is novel and non-obvious. What exactly does this mean? Section 102 of the Patent Act defines prior art, albeit in a rather obtuse way.
Subsection (a) states that a patent is not permitted for an invention that “was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention [date].” For the purposes of this paragraph, whether the patent application is filed sooner rather than later is less important because prior art is defined in terms of what was done prior to the invention date. Thus, if an inventor can prove (there’s that word again) that he invented prior to the date that the invention “was known or used by others in this country, or patented or described in a printed publication in this or a foreign country,” those activities do not count as prior art against his invention and he is still entitled to a patent.
Subsection (b) states that a patent is not permitted for an invention that “was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent.” This paragraph is more problematic for inventors that wait to file their applications. This is the paragraph that sets the one year grace period for the inventors own activities, public disclosure, offers for sale, etc. as described above. It also describes “printed publications.” This is where press releases, Internet disclosure, and other publications come into play. Occasionally, an inventor will even publish an article that discloses the invention prior to filing a patent application.
Note that activities in this subsection are measured backwards from the date of application for patent, and it covers activites of third parties. Thus, even if an invention was invented prior to a public disclosure or publication (by the inventor or a third party), if more than a year has elapsed since the time of the public disclosure or publication, the inventor is barred from getting a patent. If others may be working on similar inventions at the same time, as discussed above, filing an application sooner than later will reduce the risk that a third parties’ disclosure may be a bar to getting a patent.
Other subsections of section 102 deal with an inventor abandoning an invention or not being the actual inventor. The more time that goes by from the time an inventor conceives of an invention until a patent application is filed, the greater the chance of potential evidence of abandonment or that another person is the actual inventor.
Finally, subsection (g) deals with situations where it may be necessary to prove that the inventor did not abandon, suppress, or conceal his invention and that he proceeded with reasonable diligence from conceiving of the invention to its reduction to practice. Filing a patent application should demonstrate that the invention has not been abandoned, suppressed, or concealed and that the inventor has proceeded with reasonable diligence.
The earlier in the process an application is filed, the less these issues should come into play.
What Should an Inventor Do?
Ideally, the inventor would file patent applications early and often. By this, I mean that an application should be filed early in the invention process once the inventor is reasonably confident that he knows how to make and use the invention and that it will basically work as intended. This should be done prior to any public disclosure. This procedure has the added benefit of preserving foreign rights. A provisional application may be a good option.
Then, as the inventor works to perfect the invention, he should file additional patent applications when milestones are reached. For example, if the inventor overcomes a problem in the development, a new application should be filed for the solution.
If this is done during the period when the provisional application is pending, the non-provisional application filed at the end of 12 months could include the changes and improvements. It is also during this time period that a patent search could be performed to aid in the preparation of the non-provisional application. Going forward, additional patent applications should continue to be filed on these new inventions and improvements. A determination would need to be made as to whether the new applications can stand alone as new, unrelated applications, or whether they should claim priority to the original application.
But isn’t this expensive to file multiple patent applications for an invention? It can be. Each new application will require an additional filing fee at the PTO. It is unlikely that the cost of preparing each application would be the same however. For applications that build on prior applications, only the cost of describing and claiming the modifications will be incurred. It will cost a great deal more if patent rights are lost due to not filing early and often.
The risks of delay in filing a patent application and potentially losing patent rights far outweigh the costs of preparing more than one application.