It is not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be commercial success with an invention. While there is not a single right way to successfully get from point A to point B on the road to invention success, with every choice there are associated risks that inventors and entrepreneurs must appreciate.
When people say that inventors do not need to start with a patent application and can wait to file I cringe. It is not that this is universally bad advice, but it certainly comes with a lot of risk, even more risk now that the United States is a first to file country with only an infinitesimally small grace period remaining. Today it is imperative that the U.S. first to file laws be interpreted to mean file first before you disclose anything, demonstrate your invention publicly or offer it for sale. The risk of waiting to file a patent application is simply too great and may forever foreclose the ability to obtain a patent.
Generally speaking, an invention can be patented if it is new and non-obvious. What obviousness means these days is just about as clear as mud. For now lets take a leap of faith and just pretend that there is a consensus with respect to what is and what is not obvious, and save that thorny issue for another day. At least in the first instance when determining whether an invention is patentable that is the way to proceed, because if your invention is not new we never have to ask whether it is obvious. For more on obviousness see Understanding Obviousness: John Deere and the Basics and When is an Invention Obvious?
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Like virtually every other question in the patent field, the questions surrounding “newness” and whether an invention is new cannot be addressed with simple, straightforward answers. There is a matrix of considerations that need to be navigated, but the core inquiry under a first to file system has nothing to do with whether the inventor was first to have invented, but rather the question is whether the inventor waited to long to file a patent application. It is critical to understand that the actions of people other than the inventor can and do frequently create a problem. On top of that, the problem created may be unknown to the inventor until it is to late to do anything about it.
Unfortunately, when the U.S. switched to a first to file system we did so in a way that makes us different from much of the rest of the world. Therefore, saying that we have a first to file system might be a little misleading given that the term “first to file” has certain international meanings that do not apply. A traditional, and pure, first to file system is one that demands absolute novelty in order to obtain a patent. A traditional first to file system means that if there is a use or publication of information relating to the invention prior to the filing of a patent application no patent can be obtained, period. This is not what the U.S. first to file system mandates. There is still the promise of some level of grace period, which in some ways is unfortunate. The grace period is so limited that inventors would be better served to consider the grace period as non-existent, or perhaps only available to possibly fix an unfortunate mistake. It would be wise to treat the U.S. system as mandating the filing of a patent application first rather than risking reliance on a grace period that is extremely fragile.
Under the U.S. first to file system the inventor will still have a personal grace period, which is not available to inventors outside the U.S. in many countries that follow a more traditional formulation of the first to file rule. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not used as prior art as long as they occurred within 12 months of the filing date of a patent application relating to the invention. However, and this is a very big however, disclosures of third parties who independently arrived at the invention information will be used against the inventor unless the disclosure is of the same subject matter. Said another way, there is virtually no chance that a grace period will exist relative to third party, independently created disclosures. This is an enormous difference between the old law grace period and the new law grace period under U.S. law.
Let’s take a step back and consider the nuance of the so-called grace period that remains under the AIA. Under the new law we know that in some cases an inventor who publishes information about his or her invention will not be prevented from obtaining a patent if someone obtained or derived a subsequent disclosure from the inventor. The USPTO has told us that the second party, the deriving party, does not have to publish something that is verbatim in order for the true first inventor to be able to prove that the second party is a deriving party. In other words, the USPTO is telling us what the second party does not have to do in order for the first, disclosing inventor to claim entitlement to the grace-period. Unfortunately, stating something in the negative is not particularly illuminating as any patent practitioner can tell you. Saying something is “non-planar” is useful information but it doesn’t exactly tell you what that something is, instead it only removes one of an endless number of possibilities. Thus, to be entitled to the grace period we can guess what circumstances may justify its application, but we have very little concrete information, which makes reliance on this already small exception all the more risky.
To further show just how narrow the grace period is under the U.S. first to file system the USPTO provided this example:
For example, the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1).
Let’s translate this example. Inventor A invents and discloses a jacket that uses a Velcro closing mechanism. Inventor B subsequently, but before inventor A files a patent application, discloses a jacket that uses snaps as a closing mechanism. Then snaps used, as a closing mechanism would be prior art to the patent application filed by inventor A. But what if a Velcro closing mechanism would be viewed as obvious in light of snaps? It is conceivable that inventor A would not be able to obtain a patent on his or her disclosed invention as the result of an independent, slightly different disclosure. Thus, it seems that the grace period will only be useful in the limited, and extremely unlikely, situation where the subsequent disclosure is nearly identical to the first disclosure. Of course, the USPTO says that such disclosures do not have to be verbatim or ipsissimis verbis, but again, telling us what they do not have to be is not nearly as useful or informative as telling us what they do need to be.
What does this mean? It means first to file absolutely needs to be treated as file first! While we do not now have a pure first to file system, anyone who relies on the existence of a grace period is being reckless at best. File first. File often.
With any invention there will be a stream of conceptions and reductions to practice. The best practice is to file as soon as you have an invention that is susceptible to adequate description through words and drawings. File first. File often. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together. You can always claim priority going back to more than one provisional patent application as long as they were filed within 12 months of the filing of the non-provisional patent application.
For more information on the basics of patent law please see:
- Patent Search 101: Why US Patent Searches are Critically Important
- 10 Critical Pieces of Advice for Inventors
- There is no such thing as a provisional patent
- Patent Searches: A Great Opportunity for Inventors to Focus on What is Unique
- Should I File a Patent Application Before Licensing the Invention?
- Can cake designs result in intellectual property protection?
- Turning Your Idea into an Invention
- Learning from common patent application mistakes by inventors
- Why Patent Attorneys Don’t Work on Contingency
- Patentability: The Adequate Description Requirement of 35 U.S.C. 112
- Germany Suspends Requirement of Presidential Signature for Formal Ratification of UPC Agreement
- Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
- Patentability: The Novelty Requirement of 35 U.S.C. 102
- Patentability Overview: When can an Invention be Patented?
- Invention to Patent 101 – Everything You Need to Know to Get Started
- The Benefits of a Provisional Patent Application
- What is a Utility Patent?
- Do You Need a Patent?
- Inventing Strategy 101: Laying the Foundation for Business Success
- Patent Prosecution 101: Understanding Patent Examiner Rejections
- Patent Drafting for Beginners: The anatomy of a patent claim
- The Patent Process on a Tight but Realistic Budget
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Provisional Patent Applications the Right Way, the Wal-Mart Way
- Inventing to Solve Problems
- 5 things inventors and startups need to know about patents
- The Quid Pro Quo – How Bad Patents Can Harm A Startup Company
- There is no such thing as a provisional patent
- What is a patent and where do patent rights come from?
- The Best Mode Requirement: Not disclosing preferences in a patent application still a big mistake
- First to File Means File First! The Risk of Not Immediately Filing a Patent Application
- PCT Basics: Obtaining Patent Rights Around the World
- Sell Your Ideas With or Without a Patent
- Understanding the Patent Law Utility Requirement
- Understanding Obviousness: John Deere and the Basics
- When should you do a Patent Search?
- Design Patents 101 – Protecting Appearance Not Function
- The Top 5 Mistakes Inventors make with their Invention
- Patent Searching 101: A Patent Search Tutorial
- Patent Strategy: Laying the Foundation for Business Success
- When Should a Do It Yourself Inventor Seek Patent Assistance?
- The Cost of Obtaining a Patent in the US
- An Inventor’s Guide to Being Taken Seriously by Patent Attorneys
- Plausibly estimating the market for your invention
- The Business Responsible Approach to Patents and Inventing
- A beginner’s guide to patents and the patent process
- Every invention starts with an idea
- Patent Drafting: Thinking outside the box leads to the best patent
- Are you Ready to File a Provisional Patent Application?
- Getting Your Invention to Market: Licensing vs. Manufacturing