In patent prosecution, timing is crucial. Missing a key deadline can jeopardize your entire application, costing you valuable protection and exclusivity. It’s easy to assume that deadlines only come into play once prosecution begins, but at least two critical deadlines take effect even before your first patent application filing. Be sure to mark these critical pre-filing deadlines on your calendar.
The One-Year Grace Period for the US
If you plan to file only in the U.S. and have already publicly disclosed your invention, you must submit your patent application within one year of the earliest public disclosure date. This one-year window is known as the grace period. Filing within this period means the USPTO examiner will not consider your own disclosure as prior art against you. However, if you file outside of the grace period, your disclosure will be used as prior art, potentially making it difficult to secure patent protection.
Filing Before First Public Disclosure for Global Protection
If you plan to seek international patent protection, either through a PCT application or direct filings, you must file your patent application before any public disclosure of your invention. Most foreign jurisdictions do not offer a grace period, meaning any public disclosure, including your own, can be used as prior art to reject your application. Failing to file before public disclosure can limit your ability to protect your invention outside the US.
Best Practice: File a Provisional Application Before Public Disclosure
To safeguard your patent rights, it’s best to file at least a provisional application before any public disclosure. Even if your initial focus is in the US, having a provisional application on file keeps your options open for future international protection. Although some countries offer limited grace periods, they are typically shorter (e.g., 6 months) or come with restrictions (as seen in the EPO and China). Therefore, relying solely on these limited grace periods is risky.
Protecting Confidential Information with NDAs and CDAs
If you need to share your invention with vendors, contractors, or other third parties before filing, consider using a Confidential Disclosure Agreement (CDA) or Non-Disclosure Agreement (NDA) to protect your intellectual property. When sharing your invention with potential investors, however, keep in mind that many investors are hesitant to sign NDAs. In these cases, it’s wise to file a provisional application before entering discussions, as this will secure a priority date and provide initial protection for your invention.
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