Many new inventors and start-ups attempt to nagivate the patent system on their own to save money. This is understandable to a certain extent because obtaining a strong patent portfolio is not a cheap endeavor. Aside from problems with not being familiar with PTO practice and procedure or with Federal Circuit caselaw on how certain language used in patent applications and claims can affect patent strength (or the ability to obtain a patent at all), the most dangerous aspect of “going it alone” is the potential loss of patent rights due to missed deadlines.
Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure. To a certain extent, this rule has changed in a rather significant way as the America Invents Act goes into effect.
Problems can arise, however, when the inventors are advertising the new invention for sale, such as on a website, or even if they disclose the invention to potential investors. A website publication is quite obviously public, but what about a disclosure to potential investors? Provided that the investors are required to sign a non-disclosure agreement, this can be OK. Many investors, however, won’t sign these agreements. In this case, the inventors should disclose as little as possible regarding the invention. If too much is disclosed, this could have a significant negative effect on patent rights. Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.
One potential solution is to file a provisional application prior to disclosure to investors. If the inventors don’t have the money for such a filing, this may not work either.
Foreign Patent Rights
Another problem arises when new inventors and start-ups begin patenting on their own without realizing that there are deadlines for foreign patent filings, or realizing the significance of not obtaining foreign patent protection. Maybe they think they will file outside the US once they make a few sales of the invention and get more funding. Or, they don’t consider foreign markets, focusing initially only on the US market.
Under the Paris Convention, a patent application that is filed within one year of the filing date of a first patent application is effective as if filed in that country on the filing date of the first application. For example, if an applicant files first in the US and then files in Japan within 12 months of the US filing date, the Japanese application is effective as if filed in Japan on the same date as the US application. This generally includes provisional applications as well. If the first filed application is a provisional application, any applications filed within 12 months and claiming priority are effective as if filed on the date of the provisional application.
Conversely, if the one year deadline is missed, the application is treated by the foreign patent office as if filed on its actual filing date and not on the date of the earlier filing. Thus, a “wait until we have money” or a “I didn’t think about foreign markets” approach can result in loss of rights. One way to extend the time required to deal with these decisions is to use the Patent Cooperation Treaty.
The risk with waiting more than one year after the earliest application’s filing date to file in foreign countries is that most countries have an absolute novelty requirement. Thus, any type of public disclosure, use, publication, or offer for sale destroys patent rights in those countries. If an inventor files a US patent application, then discloses his invention to get more funding, and waits more than one year from the public disclosure to file for foreign patent protection, he will not be entitled to any foreign patent rights in absolute novelty countries. Furthermore, even if the inventor doesn’t disclose his invention, the PTO publishes most patent applications 18 months after their earliest priority date, unless the inventor requests otherwise. This also results in loss of foreign patent rights.
The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings. Saving a bit of money up front often results in the loss of patent rights in the end.