Prior to Filing: the Secrecy Problem
To encourage inventors to quickly file patents, many foreign governments require that the inventor file a patent application prior to any of these events:
- the first public use of the invention;
- the date of publication of any description of the invention; or
- the date of any sale, or offer for sale, the invention.
In one case, a secret invention was “stolen” by competitor through corporate espionage.
Then, the competitor described the stolen, previously secret, invention in a trade magazine. The inventor filed a patent application more than a year after the trade magazine published. The inventor first learned about the theft and espionage when the Patent Office rejected the patent application using the trade magazine publication.
Practically speaking, this prevents meaningful market testing prior to filing a patent application. If patent protection is necessary, you should file a patent application should before marketing, offering for sale, or even disclosing information about the new invention to anyone but trusted individuals and advisors who have been sworn to secrecy.
The United States offers a one-year grace period after any of the above events. If you are not interested in patent protection outside the United States, then you may delay filing the patent application for up to one year. When you delay filing an application, you risk losing all of your rights. In patent law, public use, publication and offers for sale that occur before the patent application can prevent the patent from issuing. On the other hand, similar activities that occur after the Patent Office publishes the patent application can be potentially infringing activity. One day can make a big difference.
Other articles that may be helpful:
- Time is of the Essence: Speedy filing best preserves your patent rights., February 24, 2008: Filing a patent application has a number of legal effects.
Competitor’s activities, which would have been Prior Art before your patent application was filled, may eventually be found to infringe your patent.
The patent application is a licensable, transferable property right.
Patent rights...
- How new is new enough?, December 14, 2008: How to use “Prior Art” to help you to decide whether to invest in a patent application.
You can determine how your invention is different from earlier inventions by conducting a “prior art search.” Inventions that come before your invention are referred to as “prior art” by patent attorneys. The differences between your invention and the...
- Does An Inventor Have to Apply In Person?, March 17, 2009: No, you do not need to apply for a patent in person, you must apply in writing to the US Patent Office. Usually, you do this through your attorney. It is not typically necessary to meet with an attorney in person. Simply call and interview your attorney by phone....
