Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
These articles are near verbatim transcripts of my “Patenting for Inventors” podcast. Click here, or the podcast image to get to the podcast feed.
Should I Tell People About My invention and What are the Patent Application Deadlines. Episode 5.
In this episode I’m going to talk about something very important and that is patent deadlines. As I talked about in the last two episodes, you cannot patent anything that was already known in the public. The exact rule patent rule says that you you cannot patent anything that was described in a printed publication or in public use, on sale, or otherwise available to the public before you filed your application.
So if you tell your friends about your invention or you write about your invention before you file your application, then you cannot get a patent on it. So who should you talk about your invention about? Ideally, you shouldn’t talk to anyone about your invention unless that person has signed what is called a non-disclosure agreement or an NDA. This doesn’t mean that you can’t tell your friends that you have a great idea for a new kind of avocado slicer, because avocado slicers already exist, so you’re not telling them anything that isn’t already in the public. But what you want to avoid doing is telling them any of the details about how your new avocado slicer works, because once you start telling them the details of how your avocado slicers works, you are putting your invention in the public. It’s ok to tell an attorney about your invention because they are already under an ethical obligation not to divulge your invention to anyone, and can be disbarred if they do. The people that you should sign a non-disclosure agreement are people that will help get your invention going such as a manufacturer or someone who might want to license your product. You would also want to use an NDA if you want to hire an independent contractor to help you create a design or prototype for your product.
One of the difficult area for inventors to understand is that potential investors, like venture capitalists, generally will not sign NDAs. There are lots of reasons why, but mostly its because they just don’t want to open themselves up to litigation when they don’t have to. Investors may be pitched thousands of ideas, and one of those ideas may be similar to what your idea was. Let’s say the investor decides to invest with some other company that has a similar idea to yours, and you find out later that this competing company of yours used an investor that you had talked to about your own idea. You might think that the investor stole your idea, and told this other company, so then you sue this investor. Investors just don’t want to go through that hassle so they don’t sign them.
The problem is then, how do you talk to an investor about your great idea if by telling them your great idea without a non-disclosure agreement, your invention is technically available to the public, and now you can’t get a patent on it anymore. There are two things you can do. One is that you file a patent application before you talk to an investor. This is the safest thing to do.
There are two main types of patent applications that you could file, a provisional application, or a non-provisional patent application. A provisional application is cheaper but there are a lot of things you have to be careful about if you file a provisional application, so you have to use these with caution. The second thing you can do is a little more dangerous, but still a possibility, and I’d really only recommend it if the cat’s already out of the bag, and you already told a lot of people and your friends, and it’s that in the United States, it’s possible to still get a patent on your invention if you file your application within 12 months of publicly disclosing your invention. This is called the 12 month grace period.
Let’s say that that you were at some product convention on January 1, 2017, you were showing your product, so it’s available to the public. You can file your patent application by December 31st, 2017 (or perhaps January 1, 2018, but I’d recommend NOT waiting until the last day) and your own disclosure cannot be used against you. This sounds great, but there are a few things that you have to worry about. First is that it’s only your own disclosure where you get the 12 month grace period. Let’s say on February 1, 2017 someone else comes up with the same invention on their own and publicly discloses it. That disclosure, even though it was shown just 1 month after yours, makes it so you can no longer get a patent even if you file within 12 months of your own disclosure.
The 12 month grace period just applies to your own disclosures or disclosures made by people that got the invention from you, NOT anyone else’s disclosures. So by not filing quickly, you are risking that someone else may come up with a similar idea, which would prevent you from getting a patent. Another problem with trying to use the 12 month grace period is that most countries do not have it. The U.S. is one of the few countries that allows inventors to file a patent application 12 months after disclosing it. In most countries, once it’s disclosed, by anyone, even by a day, then you can no longer get a patent on it, it’s considered in the public domain. There are some other countries that have a 12 month grace period, some countries have a six month grace period. Some countries have a grace period but only for specific types of situations that usually don’t apply to the small inventor. So if you’re interested at all in trying to get a patent in other countries besides the U.S., then you don’t want to mess around with the grace period, you want to file as early as possible before you disclose to anyone. I’d only recommend looking at the 12 month grace period if it’s already too late because you disclosed your invention to people without them signing a non-disclosure agreement. If that’s the case, you want to note what that date is, so you can calendar 12 months from that date as the deadline to file your patent application.
There are all kinds of nitty gritty details that I didn’t get into with non-disclosure agreements, and details having to do with the grace period for filing an application, and details for what’s considered a public disclosure, or a sale, a public use, but the gist is, don’t talk to people about your invention, don’t disclose it, don’t sell it, and don’t use it in public, before you file a patent application unless they’ve signed a non-disclosure agreement, or it’s your patent attorney. If you’ve already talked to people about your invention, file an application as quickly as possible, but especially no later than 12 months, because after that, you legally cannot file a patent application for your invention anymore.
- Dec 9, 2017 What is Intellectual Property and What Kind do I Need? Episode 1
- Dec 11, 2017 Is My Idea Patentable? Episode 2
- Dec 13, 2017 Is My Invention New, Useful, and Non-Obvious? Episode 3
- Dec 18, 2017 Patent Searches and How to Find Similar Inventions. Episode 4
- Jul 4, 2019 Should I Tell People About My Invention and What are the Patent Application Deadlines. Episode 5
- Jul 5, 2019 How to Read and Understand the Parts of a Patent. Episode 6
- Jul 5, 2019 The Patent Application Process. Episode 7
- Jul 6, 2019 What is a Provisional Patent Application and Should I File One? Episode 8
- Jul 11, 2019 Claim Drafting Part 1 - Identifying Your Invention? Episode 9
- Jul 13, 2019 Claim Drafting Part 2 - Anatomy of an Apparatus or Device Claim. Episode 10
- Jul 13, 2019 Claim Drafting Part 3 - Anatomy of a Method Claim. Episode 11
- Jul 14, 2019 Claim Drafting Part 4 - Independent and Dependent Claims. Episode 12
- Jul 23, 2019 Claim Drafting Part 5 - 10 Quick Tips for Claim Drafting . Episode 13