Patent 101 – When Should You File Your Patent Application?

Mark A. Wright
Director and Chair, Intellectual Property Practice Group
January 1, 2000

Unlike most foreign countries, the United States Patent System is a “first to invent” system rather than a “first to file” system. In other words, if there are two patent applications for the same invention before the United States Patent and Trademark Office (“USPTO”), the inventor who invented first generally is entitled to a patent even if the other inventor filed his or her application first. This rule should give some comfort to inventors in that they are not required to file a patent application the day they conceive of their invention, but inventors must be careful not to wait too long to file their patent applications.

Our patent system allows inventors to secure patents only for those inventions that are “new and useful.” In order to ensure that patents are issued only for “new” inventions, Congress has imposed various statutory deadlines that set forth when patent applications must be filed in order for the underlying invention to be eligible for patent protection. Inventors must be cognizant of these deadlines and must be diligent in filing their patent applications on time.

Most importantly, patent applications must be filed within one year of the date an invention is publicly disclosed. For example, if an inventor discusses his invention in a journal article published anywhere in the world, the inventor has one year from the date of publication to file his patent application. Or if the inventor’s employer displays the invention at a tradeshow, the one-year clock begins ticking on the date of the tradeshow.

Inventors must also be sure to file patent applications within one year of the date their invented product is either sold or offered for sale. Many companies in the past have opted to delay filing a patent application in order to first test whether the invention will be a profit maker. If a patent application is not filed within one year of the date the product of the invention was first sold or offered for sale, the inventor is forever barred from obtaining patent protection on the invention. Unfortunately, many companies have learned this rule the hard way when they opted to test the commercial success of particular inventions for more than one year before filing a patent application only to realize that they cannot obtain patent protection on a very successful invention.

Another important consideration in determining when to file a patent application is the potential for foreign patent protection. The owner of a United States patent can exclude others from making, selling or using the patented invention in the United States, but these rights of exclusion do not extend beyond the borders. Inventors who desire patent protection in particular foreign countries must obtain patents from those countries.

Unlike the United States patent system, which allows inventors to file a patent application up to one year after the public disclosure of their inventions, most foreign countries do not offer the same grace period. Instead, inventors seeking foreign patent protection typically must obtain an effective filing date before any public disclosure of their inventions.

Inventors can do this by filing their patent applications in the respective foreign countries before any public disclosure. Inventors may also first obtain an effective filing date in the United States and then take advantage of that same effective filing date in a foreign country as long as the foreign application is filed within one year of the United States application. For example, suppose an inventor files a United States patent application on January 1, 2001, and then publicly discloses his invention on February 1, 2001. He can still file a patent application for his invention in most foreign countries after the public disclosure as long as he files in the foreign countries by January 1, 2002, and claims back to the January 1, 2001 filing date of the United States application. In that manner, the inventor is able to obtain an effective filing date of January 1, 2001, which preceded any public disclosure.

Frequently inventors determine at the eleventh hour that their one-year grace period is about to expire, or that they need to file quickly before public disclosure to preserve their ability to obtain foreign patent protection. This may leave insufficient time for the careful drafting of a thorough patent application. Fortunately, these inventors can take advantage of what is known as a “provisional” patent application. A provisional patent application must include a detailed discussion of the invention, but it need not adhere to the formal requirements of a regular application. Nor must it include any “claims,” the highly technical portion of a patent application by which inventors carve out the parameters of their patent protection. The provisional application is used to obtain a filing date for an invention, and must be followed by a regular application within one year of the date of the filing of the provisional application. When beneficial, inventors should consider filing a provisional application to buy themselves a year to file the formal patent application for their inventions.

In sum, individual inventors and companies considering patent protection for their technologies must be diligent in pursuing patent protection within the statutory deadlines. Otherwise they may learn too late that they are barred from obtaining a patent on a potentially valuable invention, thereby leaving others to freely make, sell or use the invention.