Utility nonprovisional patent applications are typically published around 18 months from the priority date. This event usually comes and goes without much fanfare. Before your patent application is published, applicants should consider at least two questions:

  1. Have any improvements or modifications been made?
  2. Do you want to protect those changes in foreign countries?

Applicants who have developed improvements or modifications to the patent-pending concept would be prudent to take certain steps before publication, especially if international patent rights are desired.

Any improvements or modifications to the patent-pending invention?

In the product development phase, it is fairly common for a concept to go through changes and improvements. Unless inventors had anticipated this, the original specification most likely will not cover these changes. You will need to file either a continuation-in-part (CIP) or a new standalone patent application, which may be a provisional or nonprovisional application. In either case, the new subject matter will not be entitled to the priority date of the original filing.

Why does a later filing date matter?

Your own published patent application can potentially become prior art against your subsequent patent application for a related invention. By planning ahead, you can avoid your patent publication being used against you as prior art. Time is of the essence, and deadlines vary depending upon whether you seek US patents or foreign patents for the improvements.

Protecting improvements in the US before your patent application is published

The US patent system gives inventors a 1-year grace period from the earliest date of public disclosure to apply for US patents. A patent publication would be considered a public disclosure made by the inventor. Accordingly, applicants for US patents have up to one year from the publication date to file a new US patent application without their patent publication being used as prior art against them.

When your pending patent is published, the patent application file history will be accessible to the public. Third parties will be able to review not only what you originally filed, but the ongoing back-and-forth prosecution between you and the examiner. Filing a subsequent US application for your improvements prior to the publication date of your pending application also gives you an advantage of securing an earlier filing date before third parties can see your first nonprovisional application.

After the 1-year grace period, an applicant may still file a continuing application in the US with priority claims linking all related previously filed applications. This priority claim will give the applicant some flexibility in drafting claims in such a way so as to secure an earlier priority date to precede potential prior art.

Protecting improvements internationally before your patent is published

Unlike the US, most foreign countries do not have such a lenient grace period. So if you wish to protect any improvements in non-US countries, you should definitely file a new application for the improvements prior to the date when your patent application will be published. This will enable you to file subsequent foreign applications with a priority claim back to your pre-publication filing date.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com