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Do I have to file for a patent NOW or can I wait?


Alexandria Senn, Associate Attorney      September 16, 2008

You probably want a straight forward answer to this question, but the answer is “maybe.” Before I can answer this question, let me take a moment to explain why in many instances it is beneficial for you to file your patent application now. First, there is a very important statutory “time bar,” which may prevent you from obtaining a United States patent. Specifically, 35 U.S.C. § 102 (b) states: “a person shall be entitled to a patent…unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” In other words, if you have “publicly disclosed" your invention, then you have one year from the date of such disclosure to file for U.S. patent or else you lose the right altogether.

Now, you may be asking yourself what exactly constitutes “publicly disclosing” your invention. Luckily, there are a few guidelines. Public disclosure generally refers to publically utilizing the invention, offering the invention for sale or disclosing the invention in a publication that is in general circulation. Public disclosure generally does not refer to disclosing your invention to family members or close friends. As such, if you attend a trade show and discuss your invention, then the “time bar” is triggered and starts the one year clock to file a U.S. application. On the other hand, if you disclose your invention to your mother, then the “time bar” is likely not to be triggered. Please note that generally it takes our firm about two to four weeks to prepare an application. As such, if you are approaching the one year time bar, then it is wise to act quickly.

Secondly, it may not be beneficial to wait to file your application, even though the United States Patent Office follows a First-to-Invent system. Unlike the rest of the world, the U.S. Patent Office grants patents to the person or entity that is the first to invent and the person or entity that diligently reduces the invention to practice. Reduction to practice may be established by filing a patent application or by practicing the invention. As such, it is beneficial to file for a patent now, rather than later, because even if you are the first to invent something, you must also diligently take steps to protect your invention. Furthermore, the U.S. Patent Office is likely to switch to a First-To-File system, wherein patent rights are granted to the person or entity who is the first to file a patent application. Under such a system, there could be a race to file at the U.S. Patent Office in order to establish protection for your invention.

Some countries do not allow a period of time after use to file a patent application. Once you publicly use your invention, you can no longer obtain a patent. However, if you have previously filed a U.S. patent application, you will have a year before you must file your patent application in the foreign jurisdiction.

As you can see, there are benefits to filing a patent application now, rather than later. Certainly, it ensures you have the earliest possible filing date and protects you from losing patent rights. Even in the event that you do not feel ready to start the patent application process now, we suggest you come in to discuss how to go about best protecting your intellectual property rights in the early stages of development.

For more information on the patent process, please visit Patent Information.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Dr. Thomas R. (Terry) Williamson III is a Patent Attorney practicing in Atlanta, Georgia.

Williamson Intellectual Property Law, LLC
1870 The Exchange, Suite 100
Atlanta, GA 30339
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Williamson Intellectual Property Law, LLC
1870 The Exchange, Suite 100 - Atlanta, Georgia 30339