Can inventions be publicly disclosed prior to filing a US patent application?
The US patent system is different from the patent laws of most foreign countries in that US allows inventors to make public disclosures of their inventions prior to filing a US patent application. Most foreign patent offices would disqualify an invention from patent protection if it had been publicly disclosed before securing a patent priority date. US patent laws are a bit more lenient than foreign patent laws by enabling this inventor grace period.
Need to file a US patent before your grace period expires? Contact US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help.
How long is the patent grace period for inventors?
An inventor has up to one year from his/her earliest date of public disclosure to file a US patent application. If the inventor’s own disclosure during this 1 year grace period precedes the public disclosure of a similar invention by a third party, then the third party’s disclosure will be excluded and will not count as prior art against the inventor’s patent application filed within the 1-year period.
Exceptions to the first-to-file patent system apply for the inventor who discloses the invention within the 1-year grace period and prior to a third party’s patent filing date.
Basically, if an inventor’s prior disclosure during the 1-year grace period precedes the public disclosure or patent filing by a third party, the inventor wins by applying for a patent within the 1 year period.
Can you file a US patent after obtaining a foreign patent on the same invention?
Suppose you already filed and obtained a foreign patent for your invention. Can you still apply for a US patent on the same invention? It depends on the timing.
At the outset, consider whether you still have time to claim priority to your foreign application. For design patents, that priority deadline is 6 months from your earliest filing date. For utility patents, the priority deadline is 12 months from the earliest filing date.
Let’s assume those priority deadlines have already passed and that you will not be able to claim priority to any foreign applications. In that case, you may still be able to file a US patent if less than one year has passed from the publication date of your foreign patents.
This is how you can tell if you are still eligible for filing a US patent. What was the earliest date your foreign patent was published (shown to the public)? Has more than one year passed from that earliest date? If not, your invention is still eligible for US patent protection.
What if more one year has passed from the earliest public disclosure of an invention?
If over a year has passed since the earliest public disclosure of your invention, one possible workaround would be modifying the product to form a new product that has not been publicly disclosed. The product modifications should be non-obvious.
Ideally, you want to file patent applications early and prior to going public. If you are not sure if a product will be successful, consider filing a design patent application or a provisional patent application.
Need to file a patent application within your patent grace period?
Email US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a patent application right away.
