Is it too late to patent a product after it has been sold or publicly disclosed?

Maybe not. Ideally, you would have filed patent applications before selling or publicly disclosing your product. Since we do not live in an ideal world, it’s better to be late than never. It might not be too late to patent your product even if it’s already on the market. Let’s see if there is still time for you to get a US patent. But, first we need to understand what a public disclosure is and is not.

What does public disclosure mean?

A public disclosure refers to a non-confidential passing of information regarding an invention. For example, exhibiting your product at a trade show such as CES would be considered public disclosure. Other examples include printed publications, information shown online, pitches to investors without an NDA, invention competitions, product launches and sales, public use, etc. Information that is accessible and available to the public, even if it’s not widely known, may be considered public disclosure. MPEP § 2152 provides some guidance on the meaning of public disclosure.

What is the rule for late patent applications in the US?

An inventor may file both design and utility patent applications in the US within one year of their earliest date of public disclosure or sale. This is known as the 1-year grace period for filing patent applications in the US only. For utility patents, a late applicant may file either provisional or nonprovisional applications in the US within the one-year grace period.

Can late foreign patents be filed after public disclosure?

Typically, foreign countries are more strict than the US. Most foreign patent laws do not provide any grace period, but rather observe a rigid rule called “absolute novelty bar.” However, each foreign country will have its own patent laws which may provide some exceptions. If a grace period happens to be available in a particular country, the duration will most likely be short so you must act quickly.

Can a late PCT application be filed?

An international PCT application is due by the 12-month deadline of your priority date. If you blew past the 12-month deadline, there might be a 2-month grace period for filing a PCT application depending upon the Receiving Office (RO). In other words, a late PCT application may be filed within 14 months of the priority date of a previously filed patent application. The late PCT filing must include a request to restore the right of priority. This restoration of right of priority is found in the PCT Regulations, Rule 26bis.3. The standards for granting the request differ by Receiving Office, so choose the patent office in the country with more lenient criteria assuming the applicant is qualified to file there.

What very late patent filing options are available for a product that has already been sold or publicly disclosed?

Suppose your product has already been sold and any foreign grace periods have already lapsed. What foreign filing options are available when a significant amount of time has passed? One international patent strategy may be to think of new product modifications that have not yet been publicly disclosed. You may then be able to apply internationally to cover the new and improved version.

The more substantial the changes, the better. Insignificant modifications will increase the risk of rejections based on obviousness as defined in each foreign country.

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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