Can you file a US patent application after selling your product?
The US patent system is different from the patent laws of most foreign countries in that US allows inventors to make public disclosures of their inventions prior to filing a US patent application. Most foreign patent offices would disqualify an invention from patent protection if it had been publicly disclosed before securing a patent priority date. US patent laws are a bit more lenient than foreign patent laws by enabling this inventor grace period.
Need to file a US patent before your grace period expires? Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help.
How long is the patent grace period for inventors?
An inventor has up to one year from their earliest date of public disclosure to file a US patent application. Here are some examples of publicly disclosing inventions.
What if your original product has been sold for more than one year without a patent?
Suppose your original product has been on the marketplace for over a year, and you did not file a patent. One option is to modify the original product and file a patent application on the modified patent.
Ideally, you want to file a patent application for the modified product before launching it. If your new and improved product is already on sale, make sure your US patent application is filed within one year from the date you publicly showed or sold your modified product.
Keep in mind your original product will likely be used by the examiner as prior art against your new patent application. The key is to make the product improvements sufficiently substantial so that the Patent Office will not reject your patent application as being obvious over your original product.
Would a patent on your new product stop competitors from copying your original unpatented product?
A patent application on a new version of your original unpatented product must cover the new features that were not part of your original product. Otherwise, the patent examiner will reject your patent application as not being unique enough.
By claiming such new features in a patent application, competitors selling copycats of your old product might not be infringing the claims. Competitive products that copy the new features would have a risk of infringing your patent on the new and improved version.
What if a third party has already shown or publicly sold a product similar to your concept?
You might still be able to file a US patent depending upon the timing of the third party’s disclosure. First, we want to first make sure that your earliest public disclosure date is within one year. Second, and this is key, the third party’s earliest public disclosure must be after your earliest public disclosure date.
In other words, the inventor’s own disclosure during this 1-year grace period must have occurred before the third party’s disclosure date. That way, the third party’s disclosure will not count as prior art against the inventor’s patent application filed within the 1-year grace period.
Basically, if an inventor’s prior disclosure during the 1-year grace period precedes the public disclosure or patent filing by a third party, the inventor wins by applying for a patent within the 1 year period.
Can you file a US patent after obtaining a foreign patent on the same invention?
Suppose you already filed and obtained a foreign patent for your invention. Can you still apply for a US patent on the same invention? It depends on the timing.
At the outset, consider whether you still have time to claim priority to your foreign application. For design patents, that priority deadline is 6 months from your earliest filing date. For utility patents, the priority deadline is 12 months from the earliest filing date.
Let’s assume those priority deadlines have already passed and that you will not be able to claim priority to any foreign applications. In that case, you may still be able to file a US patent if less than one year has passed from the publication date of your foreign patents.
This is how you can tell if you are still eligible for filing a US patent. What was the earliest date your foreign patent was published (shown to the public)? Has more than one year passed from that earliest date? If not, your invention is still eligible for US patent protection.
What if more one year has passed from the earliest public disclosure of an invention?
If over a year has passed since the earliest public disclosure of your invention, one possible workaround would be modifying the product to form a new product that has not been publicly disclosed. The product modifications should be non-obvious.
Ideally, you want to file patent applications early and prior to going public. If you are not sure if a product will be successful, consider filing a design patent application or a provisional patent application.
Need to file a patent application within your patent grace period?
Email US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a patent application right away.
