What NOT to do before you file


This is an update of my previously published WARNING.  If you have made and innovation, you don’t want to lose the right to protect your innovation and to exploit it for possible income. The easiest way to lose your rights is to make a public disclosure of the innovation.

As you probably know, the US made a significant change in the patent law in 2013. Prior to the change, the patent law protected the first person to invent the innovation. Now, the law protects the first inventor TO FILE FOR PATENT PROTECTION.

Note two things: First, the US law gives the first inventor a one year grace period to file his/her patent application. Thus a public disclosure does not automatically cause a loss of US patent rights. Second, the law of the vast majority of countries does NOT provide this grace period. Under the law of most countries, any public disclosure prior to the filing of a patent application results in loss of all patent rights.

What is a public disclosure triggering loss of patent rights, i.e., ownership of the innovation?

Any disclosure, discussion or demonstration to third parties that conveys or communicates the idea and how it works or how it can be made. Note people familiar with the technology related to your innovation may need little information to understand the invention, how it can be use or how it can be made. This is a public disclosure. Communicating enough information that the recipient will understand how to use or make the invention will constitute “Enablement” under the patent law.

Therefore the composition of your audience is important.

You can protect the disclosure or presentation from becoming a public disclosure by having an effective written confidentiality agreement signed before the disclosure.

You can also limit the amount of information you convey. You may seek information from manufactures or material suppliers without an explanation the purpose of the information request. Similarly a “high level” discussion that does not disclose details may work. (However a person skilled in the technology may quickly be able to supply the details on his/her own. Remember your audience.)

The key is to avoid public disclosure of  your invention.  This may not be easy to do.

However the USPTO has created a simple (relative) mechanism for filing for patent protection. This is the Provisional Application for Patent. See my prior post describing how to file a provisional application on your own. See also my articles Patentable Invention  and Patent Application Elements.

Briefly, if you are a Small Entity, i.e., having less than 500 employees, the filing fee is $130.00. If you are a Micro-Entity meeting the $180,000 annual income threshold, the filing fee is $65.00.

Note that an effective provisional application starts from a clean sheet of paper. There are commercial entities that sell “fill in the blank” forms. However, that can be dangerous.

The KEY ELEMENT for an effective provisional application for patent is that it “teaches enablement”. (See discussion above.) Enablement is achieved when your application contains sufficient information via written text combined with simple drawings that will communicate to a hypothetical person skilled in the technology how to make or use your innovation.

In other words, the USPTO requires you to make a complete disclosure of your invention to the US Patent Office. However, your application is not published and is not accessible to the public. Filing the application with the required filing fee gives you a FILING DATE.

The provisional application is valid for 12 months after the filing date. You have 12 months during which you can sell your invention, make sales presentations, recruit material suppliers and work on further improvements. (If you make improvements, then you should seriously consider filing an additional provisional.)

Filing a provisional application with one simple claim (a one sentence statement of your invention and labeled “Claim”, plus a one page “Oath or Declaration of Inventor” which can be downloaded from the USPTO website www.uspto.gov will protect your foreign patent rights during the 12 months.

© David McEwing, 2020