WHAT NOT TO DO BEFORE YOU FILE

Introduction

In many circumstances, once the innovative horse has galloped out (or been lured out) of the barn, it is impossible to lead it back. Note also, that even your own offer to let the horse out of the barn or offer to sell the horse, sight unseen, to a potential buyer, can jeopardize patent rights.  It is important to understanding what is necessary for protecting your idea before filing an application for patent.  See also my articles Patentable Invention  and Patent Application Elements.

Reality

Since 2013, the US has granted patent patent protection to the first inventor to file protection.  Although US law does allow an inventor a one-year grace period to file a patent application after the date of first a public use or disclosure, all other entities will be bared from seeking protection.  If you are an inventor, you must not delay filing for patent protection.  Elsewhere at this site I discuss the availability of filing provisional applications for patent as a relatively inexpensive and expeditious procedure to persevere your rights.  

Foreign Patent Rights

Note that most other countries require absolute novelty in order to maintain patent protection. In other words, if you have made a disclosure or offered to sell your innovation without a sufficient non-disclosure agreement or utilized the invention for anything other than your own private development, refinement and testing, you may have jeopardized your right to obtain patent protection outside the US.

Most countries do not recognize experimental use as an exception to the absolute novelty requirement, i.e., placing the invention in commerce solely to “de-bug” the invention may cause the loss of patent rights.

US Patent Rights for Inventors

You will also have jeopardized your US patent rights to the extent that a “twelve-month clock” has started ticking.  You will also have jeopardized your ability maintain the invention as a trade secret. 

What to do

The safest course of action is to prepare the written description of your invention, stating particularly what your invention does and how it works, along with any drawings (preferably simple black and white drawings, not photographs).   This description can be submitted to the USPTO as a Provisional Application for Patent. The filing fee is only $130.00 for an individual or small entity.   If you qualify for “micro-entity status” the filing fee may only be $65.00.  The necessary forms are found at the US Patent Office website at www.USPTO.gov.

Although there are very few requirements for a provisional application for patent, the application must disclose how the invention works with sufficient detail that a person skilled in art will, after reading your description, understands how to make or use your invention without “undue experimentation”.  This is termed “teaching enablement”.

Foreign patent rights II 

Note also that the filing of the Provisional application will also start the twelve-month clock for filing the corresponding foreign patent applications (preferably through the Patent Cooperation Treaty – PCT), as well as the 18 month clock for publication of the application.

Although not required for a provisional application, you should include at least one claim with your application.  The patent laws of most foreign countries require there be at least one claim (stating what is claimed to be the invention) for recognition of your Provisional application as a bona fide patent application. I also recommend completing the Oath or Declaration of Inventor form which can be downloaded from the USPTO website, signing and filing it with the Provisional application.

Provisional 12 month protection

As discussed elsewhere, a Provisional application is effective for only twelve months. It cannot be extended.  To preserve your effort to obtain patent protect,  a corresponding non-provisional application must be filed prior to expiration of the twelve-month term and meeting all of the enhanced requirements of the USPTO for a valid application.  Failure to comply with these enhanced requirements can also result in the loss of patent rights.

Ideally, this Provisional application should be filed before you disclose or demonstrate the invention. Even if the Provisional Application has been filed, however, you are still strongly encouraged to require the participants to sign an adequate non-disclosure agreement. Presumably, the invention is still undergoing refinement and these “refinements” or “improvements” may merit patent protection.  I would urge that your non-disclosure agreement state that any improvements made in the course of work/discussion/fabrication subject of the receiving party’s activity belong to the disclosing party (you).  

Conclusion

In summary, the most important thing is to first describe and record your invention in as great detail as reasonably possible.  Remember, you want to “teach enablement” to the person skilled in the relevant art.  The description should be in sufficient detail to allow someone knowledgeable in the technology to build the innovative tool, etc., or perform the innovative method. In spite of the changes made to the US patent law in 2013, I would still recommend that the description explain the best method or form of the invention. 

This description can then be filed as a Provisional application.  Upon filing of the provisional application, your invention can be designated “patent pending.”  When you file the provisional application, you will receive a receipt assigning an application number (e.g., 62/123,456) and a filing date.  Mark the 12 month anniversary of the filing date on your calendar.  The filing date starts the 12 month clock for filing a US non-provisional application or a PCT application.  If you later decide not to expend further time or money on pursuit of patent protection, your provisional application will quietly go abandoned without any publication.  

During this twelve-month term, you can market test prototypes, solicit inventors/venture capitalist, or seek licensees or purchasers of your invention.  (Again, however, I would still utilize recommend non-disclosure agreements for any substantive discussions with potential manufactures, investors or licensees.  See comments above.)

 

© David McEwing, 2019