Avoid public disclosure before filing your patent application

If you haven’t yet filed a patent application for your invention, it’s best to keep your invention confidential until after your patent application is filed. That way, you secure two advantages:

  1. You may beat others in the first-to-file race to the USPTO, especially if a third party may attempt to file for a similar invention after seeing yours; and
  2. Your invention is eligible for foreign patent protection.

Foreign patents: zero grace period

Securing an early patent filing date prior to publicly disclosing your invention enables you 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.

You 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.

We strongly recommend that you avoid publicly disclosing your invention until after your patent application has been filed. Even if you have no interest in foreign patents at the time of the initial US filing, things may change.

What if you’ve publicly disclosed your invention prior to filing a patent application?

All is not lost, at least as far as the US is concerned. If you want to patent in the US only and you don’t care about foreign patent rights, then you have up to 1 year from your earliest date of public disclosure to file a US patent application. However, don’t wait until the 12th month to file your US application. Each day you wait, the prior art grows as others apply for similar inventions.

Use an NDA so that disclosure of your invention is not public

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 Two Critical Patent Deadlines

One easy way to remember these two deadlines is to memorize “0/1yr.” 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.

In summary:

Foreign patents: zero grace period

US patents: 1-year grace period

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.