Unfortunately, there is no straightforward answer but “maybe.” Before we begin, the general rule of thumb is that it is beneficial for you to file your patent application now or as soon as possible. First, there is a very important statutory time limit, i.e. a “time bar,” which may prevent you from obtaining a United States patent. 35 U.S.C. § 102 (b) states: “a person shall be entitled to a patent…unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” In sum, if you have “publicly disclosed” your invention, then you have one year from the date of such disclosure to file for U.S. patent or else you lose the right altogether.
So what constitutes “publicly disclosing” your invention? Public disclosure generally refers to publicly using the invention, offering the invention for sale or disclosing the invention in a publication that is in general circulation. Public disclosure generally does not refer to disclosing your invention to family members or close friends. As such, if you disclose your invention to your mother, then the “time bar” is likely not to be triggered. On the other hand, if you attend a trade show and discuss your invention, then the “time bar” is triggered and starts the one year clock to file a U.S. application. Please note that generally it takes our firm 4-6 weeks to prepare an application. As such, if you are approaching the one year time bar, then it is wise to act quickly.
Secondly, it may not be beneficial to wait to file your application, as the US has switched to a first to file system, wherein patent rights are granted to the person or entity who is the first to file a patent application. Under such a system, there could be a race to file at the U.S. Patent Office in order to establish protection for your invention. As such, similar to the rest of the world, the U.S. Patent Office grants patents to the person or entity that is first to the Patent Office. As such, it is beneficial to file for a patent now, rather than later, because even if you are the first to invent something, you must also file it first to get protection.
Some countries do not allow a period of time after use to file a patent application. Once you publicly use your invention, you can no longer obtain a patent. However, if you have previously filed a U.S. patent application, you will have a year before you must file your patent application in the foreign jurisdiction.
As you can see, there are clear benefits to filing a patent application as soon as possible. Certainly, it guarantees you getthe earliest possible filing date and protects you from losing patent rights. Even in the event that you do not feel ready to start the patent application process immediately, we suggest you call to discuss strategies to best protect your intellectual property rights in the early stages of development.
The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.
Jeff Watson is a Patent Attorney practicing in Charlotte, North Carolina.
Grell & Watson Patent Attorneys LLC
3911 Carmel Acres Dr.
Charlotte, NC 28226