WHAT NOT TO DO BEFORE YOU FILE

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.

Although US law does allow a one-year grace period to file a patent application after the date of first a public use or disclosure, most other countries require absolute novelty. In other words, if you have made a disclosure or offer of 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. 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. 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.

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). See also Document Inventions This description can be submitted to the USPTO as a Provisional Patent Application. The filing fee is only $100.00 for an individual or small entity. The necessary forms are found at the US Patent Office website at www.USPTO.gov. 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.

This 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.

As discussed elsewhere, a Provisional application is effective for only twelve months. It cannot be extended. Prior to expiration of the twelve-month term, a corresponding Utility application must be filed, meeting all of the requirements of the USPTO for a valid application. Failure to comply with these requirements can also result in the loss of patent rights. 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.

In summary, the most important thing is to first describe and record your invention in as great detail as reasonably possible. 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. The description should explain the best method or form of the invention. This written description should be dated and signed. Preferably, it should be witnessed and notarized in order to authenticate your possession of the invention as of the date of notarization.

This description can then be filed as a Provisional application. See Provisional Patent Application There are few formalities for the filing of a Provisional application, but for your own benefit, it is important for the description to be complete as possible. The provisional application will provide you with protection for one year. Before the expiration of the year, however, you will need to decide if you want to go further (and expend more money) or let the invention drop. 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.)