Historically, the first person to invent something had the patent rights to the invention, regardless of when they filed their patent application. However, with the America Invents Act which went into effect in 2013, the United States’ patent system has switched to a “first-to-file” system. This means that the first person to file a patent application with the US Patent and Trademark Office (USPTO) claims priority, or ownership, over the invention. Therefore, it is important to file your application as soon as possible in order to ensure that you get the first filing date.
Enablement
While a timely patent application is important, you must make sure that you adequately explain your invention and how it is to be implemented. This is known as enablement. If you have merely only conceived the idea for the invention, it is too early to file the patent application. You must be able to describe your invention with sufficient detail that one of ordinary skill in the art is able to practice the invention without undue experimentation. If this requirement is not met, it may result in your patent application not being granted.
Provisional Application vs. Non-Provisional Application
Drafting a full patent application can take some time. If you need to file your application quickly, you may want to consider a provisional patent application. A provisional patent application need not be as detailed as a non-provisional patent application, and thus can be filed quicker. Although, the provisional patent application must state clearly what the invention is in order to preserve the priority date of the provisional application. After filing a provisional patent application, you have twelve months from the filing date to draft a full non-provisional application that includes claims to the invention.
Patent Rights Expiration
The filing date also determines when your patent rights begin and expire. Typically, patent rights expire 20 years from the filing date. It is important to take this into consideration when filing, you want to make sure that you have exclusive ownership and rights to use and sell the invention for as long as possible.
When to File
It is possible to file your patent application too early. If you haven’t worked out all the details, you could have something missing from your application that is important. Sure, you could file another patent application once you’ve figured out these important details. However, it is quite common that the new patent application will be rejected on the grounds that the invention in the new application is considered obvious in light of the first application. For this reason, it is important to have a strategic plan about when to file your application and what kind of application to file.
Prior Art
Your filing date is also the date by which the application is examined and compared against the prior art. If you intend to publish your invention, it is important to do it after the filing date to avoid having your own work used as prior art against you. This can cause a problem even if your publication doesn’t fully disclose your invention. The publication may make your invention obvious, and it will be rejected on those grounds. Your own abandoned patent applications can also be used as prior art against you. Patent applications are published usually 18 months after the filing date, whether or not you continue to prosecute the application. It is important to remember this when filing a new application. You may decide to publish a provisional application first, as U.S. provisional applications are not published. However, if you file a PCT patent application, it is important to know that these applications are published.
Deciding when to file an application and what kind of application to file can be tricky business. It is important to discuss this with your patent counsel to ensure that you make the right decision for your invention. Contact Larson & Larson to discuss your filing date options.