Continuing our discussion on patents and when and whether to file one…

So, is it too late to file?

As we have emphasized over the last few posts, it is crucial for inventors to keep the novelty of their invention—i.e. whatever is new about your invention—a guarded secret.  If you disclose your invention without any protection, say, without a non-disclosure agreement, it can be rendered non-patentable. 

In the absence of the protection of a non-disclosure agreement, most public disclosures of an invention made before a filing date at the USPTO is obtained will prevent an inventor from obtaining patent protection for the invention.

There is one and only ONE exception to this rule: If the disclosure is limited to a publication made by the inventor or someone on behalf of the inventor within one year before the filing date of the patent, it does not become a part of the prior art.  However, relying on this one-year period can be extremely risky.

That’s the only exception. Under the old regime, other public disclosures (like offers for sale, trade show exhibitions, etc.) did not necessarily become a part of the prior art, if the patent’s filing date was within a year of the disclosure. Now, there is no 12- month grace period for these types of disclosures. 

Tying this Part 3 discussion in with last week’s Part 2 discussion on provisional patent applications, this disclosure rule shows how powerful provisional patent applications can be—because they may be used to obtain earlier filing dates on patents that issue.  (See Part 2 from last week on discussion of provisional patent applications.)

Remember: Once you file a provisional application, you have reserved your filing date. And as long as your actual patent application is filed within a year of your provisional patent application (and everything else goes smoothly), you will be entitled to keep that earlier filing date of the provisional application.

If this sounds tricky, it’s because it is tricky. Don’t risk patent forfeiture. Make sure you know what you should do, shouldn’t do, and when by contacting a registered patent attorney.