Before filing a patent application

If you haven’t yet filed a patent application on your invention, there are two critical deadlines to keep in mind:

  1. If you’re interested in foreign patents, then you must file a patent application before publicly disclosing your invention (“absolute novelty bar”); and
  2. If you wish to patent only in the US, then you can file within one year of your earliest date of public disclosure (“1-year grace period”).

Foreign patents: absolute novelty bar

Filing a patent application prior to publicly disclosing the invention enables the applicant to pursue foreign patents. Followed by most foreign countries, the “absolute novelty bar” states that the filing date of the first patent filing for the invention, known as the “priority date,” must precede the earliest date of public disclosure.

Note that the applicant need not file in every foreign country before disclosing the invention to the public. A single patent filing with a pre-disclosure priority date is sufficient to reserve the right to file in foreign countries. For most US applicants, that first patent filing will be a US application (either provisional or non-provisional application) or an international PCT application. Counterpart foreign applications may then be timely filed and backdated to the priority date of the first patent application.

I strongly recommend that clients hold off on publicly disclosing their invention until after a patent application has been filed. Even if the client has no interest in foreign patents at the time of the initial US filing, things may change. Furthermore, by waiting to launch your product until after the patent application has been filed, you minimize the risk of someone beating you to the USPTO with an earlier patent filing date.

US Patents: 1-Year Inventor Grace Period for US Applications Only

If you want to pursue a patent only in the US and you don’t care about losing foreign patent rights, then you have up to 1 year from your earliest date of public disclosure to file a US patent application. Keep mind we’re only talking about eligibility and not allowability. Just because you’re eligible to apply for a US patent doesn’t mean you should wait until the last minute to file your application. Each day you wait, the prior art grows as others apply for inventions similar or related to yours.

Use an NDA to Avoid Public Disclosure of Your Invention

To avoid publicly disclosing your invention, use a non-disclosure agreement when working with vendors and other parties. Many investors will not be willing to sign an NDA so you should consider filing a provisional application prior to raising capital.

Easy Way to Remember These 2 Critical Patent Pre-Filing Deadlines

One easy way to remember these two deadlines is to use “0-1” as a mnemonic. If you want to reserve the option of pursuing foreign patents, then you have no grace period, i.e., zero days to file after your public disclosure. If you want to patent in the US alone, then you have a 1 year to file your US application from your earliest date of public disclosure.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com