[authors: George Rondeau, Heather Colburn]
Many startup companies are formed around new ideas and inventions. Therefore, protecting such innovations may be extremely important, especially early on.
Timing Can Be Critical
If your business plan includes foreign jurisdictions (for example, manufacturing products in China, selling products in Canada, etc.), you will want to have a patent application on file before you make any public disclosures of your invention. Generally speaking, a public disclosure is any disclosure not made under a Nondisclosure Agreement (“NDA”).
On the other hand, if you are interested in pursuing patent rights only in the United States, you have up to one year after your first public disclosure to file a U.S. patent application (referred to as a one-year grace period). Therefore, it’s important that you keep track of when any disclosures were made so you don’t inadvertently miss this important date. In particular, you may have already started the one-year grace period running if you have done one of the following:
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prior to March 16, 2013, you have offered the invention for sale (even privately or under an NDA), sold the invention (even privately or under an NDA), commercially used the invention (even if in secret), publicly used the invention, or published the invention, or;
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after March 16, 2013, you have disclosed the invention publicly.
The law related to which acts constitute public disclosures for foreign filing purposes and which acts start the one-year grace period running can be complex so if you are unsure, it’s a good idea to check with a patent attorney or agent.
For many companies, the first patent application they file is a U.S. provisional patent application.
Key Features of U.S. Provisional Patent Applications
Many startup businesses file provisional patent applications because they are less expensive to prepare and file. A provisional application includes a written description of how to make and use the invention, and should include drawings (figures) that help illustrate and describe the invention. A provisional application is a good way to document your invention and show others you are pursuing patent protection for the invention.
However, a provisional application will not mature into an issued patent. Instead, it establishes a filing date (referred to as a “priority date”). If you wish to obtain a utility patent, it will be necessary to file a non-provisional patent application that claims the benefit of the earlier filing date of the provisional application (referred to as “claiming priority” to the provisional application).
To claim priority to the provisional application, you must meet the following requirements:
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the utility application must be filed within one year of the filing date of the provisional application; and
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the provisional application must include adequate support in its description and drawings to support what is later claimed in the utility application as being the invention.
Important Limitations of Provisional Applications to Consider
The second requirement (above) for claiming priority is important because many provisional applications are filed based on informal documents and before an invention is fully developed. Thus, issues may exist as to whether adequate support is provided in the provisional application for particular claims, which is required for those claims to obtain the benefit of the provisional application’s filing date. As a result, under some circumstances, a provisional application may not be the best approach and a nonprovisional application is required to avoid loss of patent rights.
If you have already started the one-year grace period running, you need to file a nonprovisional application with a full disclosure before the one-year grace period expires. Also, some foreign countries, such as Canada, require that a patent application must be actually filed in the foreign country within a similar grace period even when priority is claimed to an earlier filed provisional application. Therefore, as mentioned above, it’s important to know when the invention was first publicly disclosed or the grace period otherwise started running. Also, keep in mind it takes time to prepare a nonprovisional application so make sure you start the process well ahead of the expiration of the grace period.
If you are interested in pursuing foreign patents, it is best to delay any public disclosures of the invention until after a nonprovisional application is filed just in case the provisional application turns out not to fully support what you wish to claim as your invention, resulting in the inability to claim the benefit of your provisional application’s filing date. If that occurs and your actual filing date for the foreign application is after the first public disclosure, patent rights will be lost in most foreign countries.
Additionally, if the invention is inadequately described in the provisional application and you do not get the benefit of the filing date of the provisional application, developments by competitors, your own activities, and other prior art existing before the filing date of your nonprovisional application may affect your ability to obtain U.S. and foreign patent rights.
Take Aways
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U.S. provisional patent applications can be a less expensive way to start the patent process but are not without some limitations.
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Keep track of the dates on which the invention was first publicly disclosed or you otherwise started the grace period running so you don’t let the one year grace period expire inadvertently.
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If you wish to pursue foreign patents, it’s best to delay public disclosures until after a U.S. nonprovisional patent application is filed even if you have filed a provisional application.
George Rondeau – DWT Partner - practices intellectual property (IP) law, including domestic and international patent and trademark procurement, patentability and trademark registrability opinions, infringement and validity studies, infringement avoidance and due diligence reviews, portfolio analysis, and licensing of patents, trademarks and technology.
Heather Colburn – DWT Associate - prepares patentability and freedom-to-operate opinions and has litigation experience with cases involving patent infringement, trade secret misappropriation, and copyright infringement.
