How a Provisional Patent Application Could Save your Business

You invent something on May 1, 2012.

You are still in the conceptual stages, so you put off filing for patent protection.

On October 15, 2012, you are given the opportunity to give a presentation on your invention at a local conference.  You jump at the chance, and present your invention to the assembly of attendees.

You have now disclosed your invention to the public without the benefit of having a patent application on file.  Fortunately, you know about the 12 month grace period in the United States.  You know that if you file a patent application on or prior to October 15, 2013, you won’t lose your patent rights.

Time flies when you are busy working on your invention, your business plan, and your Kickstarter campaign.  You finally file your patent application on August 1, 2013, but that’s OK.  You filed well before your October 15, 2013 deadline.

What you don’t know is that one of the conference attendees really liked your idea.  In fact, he liked it so much that he decided to file a US patent application on it on April 1, 2013.

Two patent applications and the same invention…who gets the patent?

What you will painfully discover is that you don’t have the patent rights you think you do.

The final implementation of the America Invents Act goes into effect on March 16, 2013, and as of that date, the old rules no longer apply.

When you disclosed your invention at the October, 2012 conference, the United States was under a First-to-Invent system.  If there were two inventors claiming to have invented the same invention, the court would award the patent to the inventor who invented the invention first.  In our scenario, you would be awarded the patent.

This system gave the original inventors time to tinker with their inventions without having to file for patent protection.  This removed any fear that he would lose his patent rights if someone filed a patent application on the same invention before them, as is the case in the above scenario.

Unfortunately for you, the First-to-Invent rules end in March, 2013.  Patent applications filed on or after March 16, 2013 will be subject to a different set of rules.  As part of the America Invents Act, the United States will implement a First-to-File system.

Under the new system, if there are two inventors claiming to have invented the same invention, the court will award the patent to the inventor who filed the patent application first.

In the example above, the patent would be awarded to the conference attendee because he filed first on April 1, 2013 under the new rules.  And the kicker in all of this is…if you continue with your plans to make, use or sell that invention, you probably infringe his patent.

In order to get the benefit of a grace period and the old rules, you should have filed your patent application before March 16, 2013.  By waiting until after this date, you run the risk of someone filing a patent application on your invention before you.

The lesson in this story is the quicker you get your application on file, the better.  There will no longer be safety in delaying your patent application filing.

Filing a simple, inexpensive provisional patent application would have saved you a lot of heartache.  Having a provisional patent application on file prior to your disclosure would have ensured that you had the benefit of a full 12 month period before you had to file your non-provisional application.  The early filing date of your provisional application would have trumped the conference attendee’s later filing.

Don’t fall into this trap.  The rules are changing.  You need to understand those changes and how they impact your business.

If you must publicly disclose your invention, think seriously about filing a provisional patent application.  It could save your business.