Even if you were the first person to invent something, that fact will not preclude someone else from procuring a patent on your invention.  A few years back the United States patent system changed from being a system wherein being the first to invent something gave an inventor priority to a patent, to a system wherein being the first inventor to file a patent application gave an inventor priority to a patent.  This change in the law places a greater emphasis on filing patent applications early, in order to preclude others from stealing patent rights.  While technically the new law states that the applicant must be the first “inventor” to file, proving to the USPTO that a competitor who filed a patent application on your invention stole your invention, and is thus not an “inventor”, is a challenging and costly task, and one that can be precluded by filing before the competitor.  

Additionally, a question that every inventor must ask himself or herself before filing a patent application is “Have I publicly disclosed or sold my invention?”  If the answer to that question is yes, and the public disclosure or sale was more than a year before the filing date of the patent application, in the United States that inventor is barred from securing a patent on that invention.  This requirement underscores the importance of secrecy with respect to an invention until a patent application is filed.  Moreover, while the United States does recognize this grace period (e.g., even if you publicly disclose or sell your invention, you still have a year to seek patent protection), many countries around the world do not.  Rather, some countries only have a six month grace period (e.g., even if you publicly disclose or sell your invention, you still have six months to seek patent protection).  Other countries do not have a grace period at all.  That is, if you publicly disclose or sell your invention in these countries, you are automatically per se barred from seeking a patent on that invention.  Accordingly, it is extremely important to consider whether and when you will disclose or sell your invention, especially if you are considering securing patent protection outside of the United States.

If you have already publicly disclosed or sold your invention, and the end of the grace period is approaching, you have two options to secure patent protection.  First, you can file your non-provisional patent application.  However, this may be difficult to do.  Specifically, non-provisional patent applications must satisfy stringent requirements to mature into patents, and the claims therein generally cannot be drafted hastily.  In these situations, where the clock is especially ticking and it is critical to get something filed within the grace period, filing what is called a provisional patent application is a great option.  Provisional patent applications do not in and of themselves mature into issued patents, but what they do is secure a filing date.  Furthermore, they do not have the overly stringent requirements of the non-provisional application.  It is worth noting that provisional patent applications do not eliminate the need to file a non-provisional application.  Rather, once a provisional patent application is filed, the applicant has one year from that date to file the non-provisional patent application (e.g., the official patent application with all of the stringent requirements).  If the applicant does not file the non-provisional patent application within that one year, the provisional application is worthless and the secured filing date is lost.  Moreover, when the applicant files the official non-provisional application, he or she will link it to the provisional patent application, such that it will be entitled to the earlier filing date of the provisional patent application.  

While filing a provisional patent application is beneficial when time is of the essence, it is not a filing that should be done carelessly.  Specifically, once the patent eventually issues from the later filed non-provisional patent application, in order for the issued claims to be entitled to the filing date of the earlier provisional application, those claims must be enabled by the provisional patent application.  That is, the provisional application (e.g., the application that was filed because, in this situation, the grace period was coming to an end) must sufficiently describe the subject matter of the issued claims.  If the provisional patent application does not do that, then those non-enabled claims will not be entitled to the filing date of the provisional application.  In this situation, since the non-provisional application was filed after the grace period expired, those issued claims that were not enabled by the provisional application would be per se invalid due to the earlier public disclosure or sale.  This would essentially result in a worthless patent that if asserted against a competitor could be ignored at no peril.  In sum, provisional patent applications can be very useful when time is of the essence, but they still ought to be thorough, to enable whatever subject matter will ultimately be patented.  If they do not do this, the eventual patent could be worthless.  

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.