Almost everyone has heard of someone who made an invention, but did not patent it, perhaps because the inventor thought the invention was too minor to merit a patent or he or she didn’t know how to get a patent. The inventor may have marketed the unprotected product, or simply watched as others marketed the product long after the inventor had the idea. The United States Patent Laws require that a patent application be on file in the U.S. Patent and Trademark Office within one year of any public disclosure.
The term “public disclosure” as used here includes an offer for sale, a sale, public use, public knowledge or a publication of the invention, or similar public displays or advertising. There are some exceptions as to what constitutes “public disclosure”; but once this one-year period has run, it is generally not possible to file for a patent to protect the invention. Often, by the time it becomes apparent that an invention is valuable, the one-year period to file the U.S. patent application has run and the right to protect is lost due to the inventor’s own marketing efforts as discussed in https://www.hngn.com/articles/227862/20200113/what-can-the-experts-at-inventhelp-do-for-you.htm post.
This problem often exists because modifications or improvements which provide a benefit are often assumed to be “not enough” to merit a patent. This is particularly a problem in a company with sales and engineering staffs. The sales staff often will begin to disclose the existence of a potential modification or invention, or offer it for sale, without consulting with engineering or management regarding patents.
Thus, the one-year clock begins to run without the company considering patents or whether the clock is running. Since no consideration of patenting the invention was made, no one monitors when a patent application must be filed.
The United States Patent Law provides an avenue to secure a filing date with the U.S. Patent and Trademark Office at a reduced cost by filing a “provisional” patent application. A provisional patent application will not be examined by the U.S. Patent and Trademark Office and will not directly result in a patent, but it will preserve the filing date for a properly disclosed invention.
A formal U.S. application filed within one year of the provisional application will receive the benefit of the filing date of the earlier-filed provisional application. Foreign patent applications filed within one year of the provisional application will also receive the benefit of the filing date of the provisional application.
Because the provisional application has few formal requirements, it can be prepared more quickly and less expensively. Further, although the formal U.S. application receives the benefit of the filing date of the earlier-filed provisional application, the expiration of the patent will occur 20 years from the filing date of the formal application.
Another problem is that the patent laws of almost all foreign countries require “absolute novelty.” There can be no public disclosure prior to the filing of most foreign patent applications. This, however, does not require the filing of all foreign applications immediately as explained on https://millennialmagazine.com/2020/01/13/dont-give-up-on-your-invention-idea-turn-to-inventhelp/.
Rather, most countries in the world have a treaty with the United States whereby if you file a U.S. patent application before public disclosure of the invention, you may then file a foreign application within a year of the filing of the U.S. application and claim the “benefit” of the U.S. filing date. For these reasons it is important to make a decision on whether a particular development should be patented at an early stage in its development.
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