Too late to patent? Patenting after product sales or public disclosures

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 you file a late PCT application?

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.

Have questions on US or international late patent options?

Contact patent attorney Vic Lin or call (949) 223-9623 to explore the possibility of filing late patent applications in the US or foreign countries.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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