Publicizing Inventions Before Patenting
Many inventors want to move as quickly as possible to market their ideas as soon as they have finalized the designs on their inventions. This may mean that they immediately reach out to potential funders or that they start contacting contract manufacturers. Inventors may attend trade shows where they demonstrate their inventions to their peers and/or the public, more generally. Inventors may want to spread the word about their inventions by posting details relating to them on social networks or to their (or their company’s) website. Inventors who work in an academic environment may want to publish a paper in an academic journal discussing an unpatented invention at the earliest opportunity.
However, do these public disclosures of an invention affect a future patent application covering the invention? The answer is, in some instances, yes. During the patent examination process at the United States Patent and Trademark Office (USPTO), the patent examiner can use pretty much anything that was published or publicly available before the application date to issue a rejection of the application that he or she claims discloses the inventor’s invention in the patent application. This includes issued patents, printed publications, public use of allegedly similar inventions, and allegedly similar inventions being on sale or otherwise available to the public. The actual language of the statute is available in the Manual of Patent Examination Practices (MPEP) at section 2120. However, disclosures made 1 year or less by, or originating from, the inventor are exceptions to the general rule and cannot be used against the inventor’s patent application by the examiner at the USPTO. In other words, an inventor has a one-year grace period from the first public disclosure of his or her invention to file a patent application with the USPTO.
Given the grace period in the United States, what is the best approach for an inventor who wants to file an application on it with the USPTO and get his invention to market (or raise funds from investors, etc.) as soon as possible? The best approach is to file an application with the USPTO and then disclose the invention publicly. The patent offices in many foreign jurisdictions do not provide a similar grace period or any grace period at all. However, if you have already publicly disclosed your invention in some way, do not panic. If you are only interested in US protection for your invention and the disclosure was less than a year ago, contact a registered US patent attorney or agent as soon as possible to get an application on file with the USPTO covering the disclosed invention. If you are interested in patent protection in other jurisdictions too, explain to the patent agent in each relevant jurisdiction the exact nature of the public disclosure(s) so that you know how it (or they) might affect your application in each jurisdiction before you make your decision on where to file. Knowing that a prior disclosure eliminates the possibility of patent coverage in a foreign jurisdiction may be disappointing, but it is better than wasting a lot of time and money on an application that will never be issued.
David has helped individuals, research institutions, and start-ups with registering their trademarks and applying for patent protection on their inventions. During his career, he has helped his clients buy and sell intellectual property of all types, either alone or as part of a larger transaction, and license intellectual property rights.