Patent Deadlines. Episode 5

The Importance of Patent Deadlines

In this episode, I’m going to talk about something very important—patent deadlines. As I discussed in the last two episodes, you cannot patent anything that was already known to the public.

The exact patent rule states that you cannot patent anything that was described in a printed publication, 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, create a prototype, or write about it before filing your application, you cannot get a patent on it.

Who Should You Talk to About Your Invention?

Ideally, you shouldn’t talk to anyone about your invention unless they have signed a Non-Disclosure Agreement (NDA)or they are an attorney.

Safe People to Talk to:

• Patent Attorneys – They are ethically obligated not to disclose your invention and can be disbarred if they do.

• Individuals who have signed an NDA, including:

  • Manufacturers

  • Potential licensees

  • Independent contractors helping with design or prototyping

It’s okay to mention to your friends that you have a great idea for a new type of avocado slicer because avocado slicers already exist. However, do not disclose any details about how your new avocado slicer works, as that could make your invention publicly available.

Who Will Not Sign an NDA?

One of the most difficult concepts for inventors to understand is that potential investors, like venture capitalists, generally will not sign NDAs.

Investors hear thousands of pitches, and some may be similar to your idea. If they later invest in a company with a similar invention, you might believe they stole your idea and sue them. To avoid this risk, most investors refuse to sign NDAs.

How to Protect Your Invention Before Talking to Investors

If investors won’t sign an NDA, how do you protect your idea when pitching them?

You have two options:

1. File a patent application before speaking with investors.

   • This is the safest option.

   • You can file a provisional patent application (cheaper but requires caution) or a non-provisional patent application.

2. Rely on the 12-Month Grace Period (U.S. Only).

   • If you have already disclosed your invention, you have 12 months from the date of disclosure to file a patent application in the United States.

   • However, this grace period applies only to your own disclosures or disclosures made by someone who got the invention from you.

   • If someone else independently invents the same thing and publicly discloses it, you may lose the ability to patent it—even within 12 months of your disclosure.

Example: Product Convention Disclosure

Let’s say you attended a product convention on January 1, 2017, and you showcased your product to the public. Your invention is now publicly available. You have until December 31, 2017, to file a patent application under the 12-month grace period.

However, there are a few risks with relying on the grace period:

• Only your own disclosure is protected.

• If someone else independently invents the same thing and discloses it on February 1, 2017, that disclosure now prevents you from obtaining a patent—even if you file within 12 months.

• The grace period does not apply to others’ disclosures, only your own or disclosures made by people who got the invention from you.

The Problem with the 12-Month Grace Period

While the U.S. allows a 12-month grace period, most other countries do not.

• If you disclose your invention publicly before filing a patent application, you may lose the right to patent it in other countries.

• Some countries have 6-month grace periods, but these usually apply only in limited circumstances.

• Some countries have grace periods, but only for specific situations that usually don’t apply to small inventors.

If you plan to seek patents outside the U.S., you should file before any public disclosure. I only recommend relying on the 12-month grace period if you have already disclosed your invention and it’s too late to keep it confidential. In that case, you should note the date of disclosure and calendar 12 months from that date as your deadline to file your patent application.

Key Takeaways

• Do not disclose your invention publicly before filing a patent application.

• Only discuss your invention with a patent attorney or individuals who have signed an NDA.

• Investors will not sign NDAs, so file a patent application before pitching to them.

• If you have already disclosed your invention, file a patent application as soon as possible, and no later than 12 months after disclosure.

• Most countries do not have a 12-month grace period, so early filing is critical for international patents.

There are many fine details that I did not get into regarding NDAs, the grace period, public disclosure, and what qualifies as a sale or public use. The basic rule is:

• Don’t talk to people about your invention.

• Don’t disclose, sell, or use your invention in public before filing a patent application unless they have signed an NDA or they are your patent attorney.

• If you’ve already disclosed your invention, file an application as quickly as possible—especially within 12 months. After that, you legally cannot file a patent application.

Next Episode Preview

In the next episode, we’re finally going to get into the patent application itself with an overview of all its parts. The episodes after that will cover how to write each section of the application.

Until next time, I’m Adam Diament of Diament Patent Law—keep on inventing!