Should I share my idea before applying for a patent?

It’s almost never to your benefit to disclose your concept before filing a patent application. By doing so, you lose foreign patent rights and risk someone filing first with the Patent Office. If your invention is patent-pending, then have some options for safely disclosing your concept.

What can be shared after filing a patent application?

The question arises as to what can you discuss after obtaining patent pending status. The simple answer is you can disclose whatever is disclosed in the patent application as filed. Any new matter, such as improvements or later versions, should be kept confidential until you file a new application covering any subject matter that was not included in the first filing. The key issue is the content contained in the pending application. Inventors and entrepreneurs want to know if they are sufficiently protected with a pending application such that it’s safe to talk about their patent pending concepts.

Can I stop someone with patent-pending rights?

Keep in mind that the owner of a patent application will not have any actual patent rights to enforce against others unless and until the patent is granted. And anyone with patent experience knows that success is not a guaranteed outcome when it comes to the USPTO, especially with utility patent applications. It is possible to obtain provisional patent rights through a published utility application, but even those rights come into play only if the application is ultimately granted.

What protection does patent-pending provide?

So, patent-pending inventors/owners are protected in the sense that they can disclose their invention without their disclosure hurting their ability to get a patent. Also, waiting until after applying for a patent to disclose patent pending information minimizes the probability of a third party beating you to the Patent Office under the first-to-file rule. Such patience also enables you to apply for international patent protection because you haven’t violated the absolute novelty bar adopted by most foreign countries.

What are some patent-pending fails?

There are several caveats to patent-pending “protection.” The patent application might not issue, but instead become abandoned. If a nonprovisional application was filed without a nonpublication request, the patent application will be published. So, an applicant risks exposing valuable technical information to the public without getting any exclusivity in return, information which may have been kept a trade secret. 

Another common scenario occurs when only a provisional patent application has been filed, and the applicant fails to convert to a nonprovisional application within the 1-year timeframe. This results in a loss of the earlier provisional filing date, known as the “priority date.” Depending upon when an applicant publicly discloses the covered invention, the loss of the priority date could preclude an applicant from securing U.S. patent rights if more than 1 year has passed since the disclosure date. The option for foreign patent protection would also be lost if the priority date preceding the public disclosure was forfeited.

The key, therefore, to maintaining and gaining patent protection is follow-through. A provisional applicant must follow through with a timely nonprovisional, and a nonprovisional applicant must follow through with the ongoing prosecution to secure the patent if possible.

If you are not yet ready to file a patent application, avoid publicly disclosing your concepts and use NDAs as much as practicable.

Is it safe to sell patent-pending products?

To go from patent-pending to patented is no guarantee, especially when it comes to utility patent applications. A business owner has to weigh the risks of early copycat products while the application is pending against the loss of business in waiting for the patent to be granted. Business considerations beyond IP rights may play a larger role in deciding when to initiate sales of patent-pending products. Selling patent-pending products after the filing date will not jeopardize the patent application so long as the disclosure in the application sufficiently covers what is being sold.

Keep in mind that the vast majority of design patent applications are allowed. An owner of a pending design application may feel more confident about selling products earlier given the higher approval rate and shorter timeframe of design patent applications.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
Why disadvantage yourself by waiting to protect your IP? Do you enjoy seeing others register your innovation? The mission of our registered patent attorneys is to equip you with solid IP rights that result in funding, growth and sales. Email or call us so we can get to work! (949) 223-9623 | vlin@icaplaw.com
Vic Lin

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