The clock is ticking on your new product concept. One wrong move with patent timing could cost you everything. Here are the three critical patent application timing mistakes that could destroy your patent rights.
Mistake #1: Waiting Too Long to File After Disclosure
Critical patent timing mistake number one is waiting too long to file a patent application after you’ve made a disclosure. There is a grace period in the United States that technically gives inventors, or product creators, up to 12 months to file a patent application after they have made their first disclosure of whatever the invention or product concept is. But this 12-month grace period can be a dangerous trap.
How Third Parties Can Beat You to the Patent Office
The biggest risk with reliance on this grace period is that if you disclose your invention or your product concept and someone else sees that disclosure, they can make their own variation. When they consider themselves to be an “inventor” of their own variation of what you originally created, it creates a messy situation when it comes to establishing the requirements for patentability for your patent application on your disclosure.
For example, if someone else actually takes that concept, tweaks it, and files it as their own, they may have the earlier filing date, which could prevent you from ever getting a patent application that you filed after that third party did. So, it’s always recommended that you file your patent application as early as possible and, whenever possible, file your patent application before you make any disclosure at all – whether it’s to an investor, to a manufacturer, or to any third party that isn’t under strict invention assignment and non-disclosure obligations. Even then, be cautious because sometimes people can get around those agreements.
Common Disclosure Mistakes That Can Hurt Your Patent Application
There are some common scenarios of product creators or inventors who wait too long after making a public disclosure before filing a patent application. Sometimes, when people have a product that they’re really excited to get out there, they take it to a trade show. They then demo the product at a trade show in front of thousands of people – any one of whom could be inspired by that product that the inventor has created. Maybe they create their own variation and file their own patent application, or sell it and then again create obstacles to patentability of the product that you just disclosed at the trade show.
Another big scenario is clients coming to their patent attorney after they have published their invention or their product concept in some kind of academic research paper or just publication online, even like a blog post. Those publications are references the patent examiners can consider prior art and potentially use them against your invention.
Again, there is this 12-month grace period but it sometimes is forgotten about, and sometimes patent examiners might consider an earlier post that might have alluded to the actual disclosure as being suggestive of what the product is. So, those kinds of publications – if it has your invention or has your product and you think that you may at some point try to patent that product – make sure you file your patent application before you make any of those kinds of publications.
Another big one is getting into a deal before you’ve filed a patent application protecting the product. This can include Kickstarter or crowdfunding platforms. Often, clients come to their patent attorney after they’ve successfully crowdfunded their product. They say, “I now have the money to pursue a patent.”
Unfortunately, they spent the last 18 months building this crowdfunding campaign and using the money, so that’s a deal and that 18-month public disclosure now is outside of the grace period, meaning it is a disclosure that can be used against a patent application. So, definitely be cautious about crowdfunding campaigns.
Sometimes it doesn’t take a crowdfunding campaign. Sometimes, it can take a deal that inventors or product creators mistakenly think is semi-private in a way that wouldn’t impact the patent application. An example of this was actually decided by the Supreme Court back in 2019 where Teva, which is a pharmaceutical company, lost its patent protection for an important drug because they entered into a supply agreement more than 12 months before they filed their patent application. So, just having that one supply agreement, or one commercial arrangement, before filing your patent application can jeopardize or potentially invalidate any future patent rights or your ability to get a patent after you’ve gotten into that arrangement.
In summary, to avoid the devastating consequences of creating prior art that can invalidate your patent before you’ve even filed it, make sure that you file a patent application before you make any disclosure of any kind – but certainly before that 12-month grace period expires.
Mistake #2: Missing Critical Patent Deadlines
Critical patent mistake number two: missing critical deadlines. Probably the most commonly missed deadline is the 12-month deadline to file a non-provisional patent application after you’ve filed a provisional patent application.
A provisional patent application is a placeholder application and you have 12 months from when you file that placeholder patent application, during which time you do have patent pending status, to file a non-provisional patent application. This 12-month deadline is the most commonly missed deadline of anything associated with patent law.
Another commonly missed deadline associated with patents is the deadline to pay maintenance fees. Once you receive a granted patent, you are obligated to pay maintenance fees at 3.5 years, 7.5 years, and 11.5 years after the grant of your patent. If you miss these maintenance fees your patent can become abandoned or expired. You will lose the rights to protect others from making, using, or selling your invention if you miss maintenance fees and don’t fix it.
The patent office typically doesn’t mess around when it comes to these kinds of deadlines. There is a litany of cases where a law firm or patent owner missed a deadline, even in some cases by just one day, and lost all of their rights in their patent. To give you a sense of how consequential missing a deadline might be, there is a case called MDCO that lost four and a half years of market exclusivity, which cost millions and millions and millions of dollars when their law firm, Fish and Neave, missed a patent deadline by just one day. So deadlines are important – don’t miss a deadline!
Mistake #3: Filing a Poorly Drafted Patent Application
The third consequential mistake when it comes to patent timing is filing bad patent applications. Often, clients, inventors, and product creators don’t appreciate that there can be good patent applications and bad patent applications. There’s this prevailing sense sometimes that as long as they just check the box and file a patent application, that they will have the protection of the patent system. There could be nothing further from the truth.
Why a “Bad” Patent Application Can Ruin Your Protection
If you file a bad patent application this can have major consequences in terms of the value and enforceability of your patent. For example, if you file a bad patent application you can lose the benefit of the earlier filing date that patent application affords.
To elaborate, consider a situation where you file a bad patent application, someone sees the product that you’ve described in the patent application – maybe you have it for sale – and then they tweak that product and file a good patent application. Let’s say that bad patent application that you filed is incomplete, maybe it’s rushed, maybe it doesn’t have enough technical detail. It just doesn’t enable the invention.
Even though the person who was inspired to make that tweaked invention from your product, maybe they filed a good patent application and they did disclose that new tweaked version of the product with all of the technical detail needed to meet all the requirements of the patent system. That second filer who knocked your product off – even though you thought you were under patent pending and thought you had patent protection – might have the benefit of priority and might actually be able to get a patent over you and over your patent application because your patent was so bad.
Then, depending on the tweaks, how different it is, and how much more it encompasses associated with your product, they might be able to exclude you from making or selling your invention.
The Costly Consequences of Rushed or Incomplete Filings
Probably the most common example I see when it comes to poorly drafted patent applications is with regard again to provisional patent applications. There’s a misconception that inventors think they can self-draft a provisional, and they might not know the requirements of the patent system – specifically around 35 USC 112 for technical disclosure, enablement, disclosing the best node, et cetera, et cetera.
If that’s the case they may file a bad patent application and think that they’re covered. Especially in these circumstances, patent attorneys often see patent applications that they’re asked to fix and, sometimes, it’s not even possible to fix them. These bad patent applications might miss crucial variations of the product or they might miss embodiments that would help build more disclosure around the core embodiment to make it easier for other parties to invent around.
As I mentioned, having a bad patent application filed can be extremely consequential. You can lose your filing date or your ability to claim priority back behind someone else that comes out with the same product. In later applications, you’re probably going to face an increased risk of rejection of the patent application as a whole during examination of the patent. Frankly, you’re going to have weakened patent rights: your rights might not survive litigation if you ever try to enforce your patent if they’re based on a bad patent application. In other words, the other party that you’re suing can probably challenge your patent and might be able to invalidate it.
There’s one specific example that I’d point to called Novozymes, and they lost their earlier priority date claiming priority back to a provisional patent application because that provisional patent application didn’t adequately support the claims in their later filed non-provisional application. That rushed provisional didn’t provide enough details specifically about the enzymes that the non-provisional was claiming, so they lost their patent rights. This cost that company millions and millions of dollars based on an improper reliance on a bad provisional patent application.
How to Avoid These Costly Patent Timing Mistakes
The solution in all three examples of these categories of patent timing mistakes is relatively straightforward:
- File complete patent applications and do so as early as possible.
- Maintain rigorous deadline tracking systems.
- Ensure you have comprehensive technical disclosure in all of your patent filings.
This proactive approach will help secure both domestic and international patent rights, and maintain the strongest possible intellectual property protections for you, your products, and your business.
Of course, and probably most importantly, always work with a patent lawyer. You will avoid the vast majority of these patent timing mistakes if you simply work with a patent attorney whose job day in and day out is to make sure that he or she gets the patent rights and maximizes the patent rights that are available to you.
Good patent attorneys will always have backed up docketing systems to make sure that deadlines aren’t missed. They’ll have the training and technical expertise to be able to build patent applications that are good and that have the critical disclosures. Finally, they’ll just generally be able to advise you in a way that maximizes the value of what you’re doing when it comes to patent protection.
If you need help, advice, or guidance on any specific patent related project, feel free to contact our Denver patent law firm. We offer free initial consultations so you don’t have to pay anything to set up a call – we’d be happy to talk to you.
