How long, really, do you have to file a patent application?

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By David French patentapplication

“Don’t disclose your invention or you’ll lose your patent rights!” This is the type of advice that you will typically get in a coffee shop, or over a beer around 5:30 in the evening before you head home. Is this true?

Well the answer really is, “Yes and no.” How can this be?

The answer is that you will lose your patent rights in Europe and countries generally that adopt a standard of “absolute world novelty” as a requirement for granting a patent. I like to describe this as requiring that an invention be “pristine” in order to qualify for a patent grant under this standard. But you will not lose your patent rights in Canada, and not in certain other important countries, simply by disclosing the invention yourself. At least, you will not lose your patent rights immediately.

At least four countries in the world — Canada, USA, Australia and the Republic of South Korea — provide an unqualified one-year grace period to excuse public disclosures made by an inventor (or applicants claiming rights under an inventor meaning assignees). A number of other countries, such as Japan, do have grace periods but they are often limited to six months and in some cases only protect certain types of disclosures. All countries around the world are required by an international convention to give a period of protection against an applicant’s own disclosures where the disclosures occur at a recognized international exhibition, according to Paris Convention Article 11.

So talking in a bar about your invention may not cause you to lose your rights in the four reference countries, unless you wait for more than a year. And even then, merely “talking” about your invention in a bar may not be fatal to your rights in Europe. Not all kinds of disclosures are fatal.

The kinds of disclosures that are fatal in countries that have absolute novelty requirements for patent filings are those that make an invention “available to the public.” There are two branches to this requirement. The first is that a member of the public must receive information about the invention. And, the second branch is that the amount of information that such an individual receives must be sufficient to make the invention “available” to them. We have very little jurisprudence in North America as to either of these branches. But it’s clear that if you have a discussion under an understanding of confidentiality, then you have not made anything “available to the public.” All that is required is an understanding of confidentiality. Nothing has to be reduced to writing, although writing is helpful when it’s time to prove something. If your description of your invention is only partial and is incomplete, then equally, you may not have made your invention “available” to the person being addressed. In these cases, no patent rights will be lost.

However, let us assume for purposes of analysis, that you have foolishly told the story of your invention in some sort of public arena in sufficient detail that people listening are able to understand how to reproduce the invention. For example, at a town hall meeting you might describe an arrangement for converting a standard rotary lawnmower into a leaf chopper, proposing that the city sponsor collection of chopped leaves in the fall for composting or some other green disposition. Let’s assume that you tell the whole story at the meeting. This will then qualify as a disclosure, which will cause you to lose your rights in Europe and other absolute novelty countries. But you will still have one year to file in your four applicant-originating  grace-period granting countries. Or will you?

Actually, if you decide to wait one year from your town hall meeting before filing an application, you risk losing your rights in even these four countries. The reason is that these countries operate on an absolute world novelty standard in respect of disclosures and filings as between strangers. This is generally what is meant by the somewhat inaccurate expression: a first-to-file system.

The Americans switched to a first-to-file system on March 16, 2013. Canada did so in 1989. This means that when two people file for the same invention, the first to file will be granted a patent and the other applicant will be refused. But going hand-in-hand with the first-to-file concept is the more serious consequence that if someone makes a public disclosure of your invention, a disclosure that is sufficient to make it “available to the public,” and this occurs before you file a patent application, then it’s too late for you to file for a patent application yourself. This is true even in countries that allow for an applicant-originating grace period.

A more accurate description of the world patent system is that almost every country is now operating on the basis of first-to-file a disclosure that has never before been made available to the public by another person. This is treating an earlier application and an earlier public disclosure, both originating from someone else, on the same footing. This means that if you rely on the applicant-anchored one-year grace period, you risk losing your right to obtain a patent if somebody else either discloses your invention publicly or files first for the same invention.

What does this all mean in practical terms?

Well, the reality is that it is not common for two people to file for the same invention. In the United States when they were operating on a first-to-invent system, proceedings to sort out who was the first inventor occurred in less than one percent of all applications filed. In fact, in many years Interferences were declared in less than one-third of one percent of all applications filed. So it’s rare for people to file for the same invention in terms of overall statistics. On the other hand, when there’s a valuable invention just waiting to be discovered, as between two major corporations competing to make a breakthrough in a certain field, collisions may occur more often. Companies in this situation should file applications early, and often. But if you are a small business or private inventor and have thought of some obscure idea, then the chances that someone else will either file a patent application or publicly disclose the same idea are not very high. It’s on this basis that so many people, when they hear about the one-year grace period available for filing in Canada and the United States, choose to delay making a filing until near the end of that year.

The original question was, “How long, really, do you have to file a patent application?” One answer, possibly, is indefinitely. If your idea has never before been disclosed publicly to the necessary degree, then the possibility of filing to obtain a patent will remain open so long as this condition remains true. On the other hand, if you have a good invention, others may think of the same thing and if they act first to either file an application or publicly disclose the idea, they will get the patent and you won’t.

The choice is yours as to whether to delay. And what about whether to file at all? Well, that requires a completely different kind of analysis.

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.

Image: US patent 1,489,458 (Vice-gripTM)

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