Patent Application Deadlines - Should I Tell People About My Invention?

The following is a transcript of Episode 5 from the "Patenting for Inventors" Podcast.

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 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.

If you tell your friends about your invention or you publicly present a prototype of your invention, or you write about your invention before you file your application, then it's possible that you might not be able to get a patent for it. So who should you talk with about your invention? Ideally, you shouldn’t talk to anyone about your invention unless that person has signed what is called a non-disclosure agreement, or you're talking with an attorney.

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 attorneys 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 have 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 areas for inventors to understand is that potential investors, like venture capitalists generally will not sign NDAs. There are lots of reasons why, but mostly it's 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 is. 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 NDAs.

The problem is, 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 now 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 generally two common 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. 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 about the invention. 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 and you were showing your product, so it’s available to the public. You can file your patent application by December 31st, 2017 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 filed 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're risking that someone else may come up with a similar idea, which would prevent you from getting a patent. Another problem the 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 within 12 months after disclosing it. In most countries once it’s disclosed, by anyone, even a day before you file your application, then you can no longer get a patent on it because 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. 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 disclosure, don’t sell it, and don’t use it in public before you file a patent application, unless the people you're showing it to have signed an non-disclosure agreement, or its 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 get a patent for your invention anymore.