Oct 16, 2014
It is common for some individuals or small companies to attempt to navigate the patent system on their own in an effort to save money. With the prices charged by some competitors for patent work, their actions are understandable. However, this is not recommended. There are multiple deadlines and other various dates which can creep up unexpectedly resulting in missed opportunities and lost protection if you are not fully aware of the processes and law.
Currently, under U.S. patent law, an inventor can publicly disclose his invention without losing patent rights, provided that he files a patent application within one year of that disclosure. How does that affect your ability to file in foreign countries? Each country has some different patent rules. The America Invents Act that changed our patent system from a first-to-invent system to a first-to-file system is a step toward harmonization of our law with the rest of the world. However, differences still exist and the danger remains when traversing the process alone.
What are some common questions to think about:
- Can you advertise the invention for sale?
- Can you share it to potential investors?
- When do you need to file the application in view of your disclosure?
Posting information on a website is a public disclosure. Many foreign countries prohibit the patenting of an invention after disclosure has been made anywhere in the world. Disclosure to an investor may be OK provided that the investors are required to sign a non-disclosure agreement. Even with proper agreements in place, there is risk in disclosing to investors prior to a patent filing. Additionally, many investors won’t sign these agreements. In this case, the inventors should disclose as little as possible regarding the invention. If too much is disclosed, this could have a significant negative effect on patent rights. Even if the complete invention is not disclosed, the amount of the disclosure may cause the invention to be adjudged obvious in light of other prior art.
The bottom line is that patent deadlines that can result in loss of patent rights are another reason that inventors should work with a patent attorney who can guide them through the various deadlines and provide advice regarding US and foreign patent filings. Saving a bit of money up front often results in the loss of patent rights in the end.
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