The Risk of Not Immediately Filing a Patent Application

 Everyone views the world through a prism, and the prism I look through is different than the prism others look through.  That should hardly come as a surprise given that we each find ourselves at any point in time being where we are as a result of the journey we have taken.  It is, therefore, not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be success.

I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A where you have an idea or invention to point B where you dreams of commercial success are coming true, but with every choice there are associated risks.  Unfortunately, many inventors still have not received the message about the importance of filing a patent application as quickly as possible. I know this to be true because every week I am contacted by inventors who either have already started selling or using their invention, or who are within a few days or weeks of the same. With the United States being a first to file system, a change that became effective March 16 ,2013, this can be a fatal mistake.

Generally speaking, an invention can be patented if it is new and non-obvious. What obviousness means these days is just about as clear as mud, thanks to the US Supreme Court decision in KSR v. Teleflex. Indeed, what is obvious is largely in the eye of the beholder, although the Patent Office has tried to articulate an objective standard reflected in the so-called KSR rationales. For now lets take a leap of faith and just pretend that there is a consensus with respect to what is and what is not obvious. At least in the first instance when determining whether an invention is patentable that is the way to proceed, because if your invention is not new we never have to ask whether it is obvious. For those interested in getting into the weeds with respect to obviousness I recommend Understanding Obviousness: John Deere and the Basics, Obviousness When All Elements are Not Present in the Prior Art, and When is an Invention Obvious.

Like virtually every other question in the patent field, the questions surrounding “newness” and whether an invention is new cannot be addressed with a simple, straight forward answer.


First to Invent (on or before March 15, 2013)

Under the old law in place on March 15, 2013, and before, there was a matrix of considerations that needed to be navigated. The old law is still relevant because if you filed an application on or before March 15, 2013, your application will be examined under the old law. Similarly, if you file an application on or after March 16, 2013, but which only includes patent claims entitled to a priority filing date on or before March 15, 2013, the application will be examined under the old law.

Under the old law, there were two primary parts to “patent newness.” First, did something occur prior to your date of invention that demonstrates you are not the inventor, and someone beat you to the invention? Second, despite being the true first inventor did you waited too long to file a patent application? It was this second aspect of newness that caused real problems for those who did not file a patent application as soon as possible. The actions of people other than yourself frequently created a problem. On top of that, the problem created could have been unknown to the inventor until it was too late to do anything about it.

The relevant old-law provision in question was 35 USC 102, which is titled “Conditions for patentability; novelty and loss of right to patent.” Secion 102(a) presented the prototypical newness question associated with the first prong above, are you the first to invent. Old-law section 102(a), which today would be called pre-AIA 102 due to the fact that the AIA, or America Invents Act, changed the law, stated:

A person shall be entitled to a patent unless –

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent…

As you can see, the focus was on whether certain events, specifically knowledge or use in the US, or a patent or printed publication describing the invention became available, before the date of invention. This is called a “novelty” section because the trigger is the date of invention. If these things occurred prior to your date of invention you really were not the first to invent, and you are not entitled to a patent.

Compare and contrast pre-AIA 102(a) with pre-AIA 102(b). Section 102(b) states:

A person shall be entitled to a patent unless –

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…

Notice here that we are again asking about patents and printed publications, but we are also now concerned with whether the invention was on sale in the US or in public use in the US. This time the trigger is the date a patent application is filed in the US, so if these things happened more than one year before the date you file a US patent application you are prevented from ever obtaining a patent, even if you were the first to invent. This is called a “statutory bar” and is one of the things that cause patent attorneys to lie awake at night and to have malpractice insurance.  It is also one reason why filing a patent application as early as possible is a wise move. Simply stated, tThere is absolutely NO way to overcome a statutory bar. The US Supreme Court and every other court that has ever issued rulings related to pre-AIA 102(b) consistently ruled that one year means one year, no exceptions. Not even a single day beyond one year can be forgiven or excused.

The real difficulty with respect to pre-AIA 102(b) was that while the inventor could create their own problem, it was also possible for other people to create a problem for an inventor. So those who are unknown to the inventor can and create statutory bar problems.  So while it was commonly said that the US was a first-to-invent country under pre-AIA law, that was really only half the story.  If you were the first to invent and waited to long to file your patent application you simply could not obtain a patent.



First to File (effective March 16, 2013)

The United States abandoned the first to invent rule with passage of the AIA, which means that when an inventor invented is irrelevant. The question is only when did the inventor file a patent application.

Under the U.S. first to file system the inventor still has a personal grace-period, which is not available to many inventors outside the U.S. in countries that follow a more traditional formulation of the first to file rule. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not used as prior art as long as they occurred within 12 months of the filing date of a patent application relating to the invention. However, and this is a very big however, disclosures of third-parties who independently arrived at the invention information will be used against the inventor unless the disclosure is of the same subject matter. This is an enormous difference between the old law and the new law.

Specifically, the USPTO provided this explanation of the grace-period in the Examination Guidelines for Implementing First Inventor to File Provisions of the Leahy-Smith America Invents Act:

The exception in AIA 35 U.S.C. 102(b)(1)(B) focuses on the ‘‘subject matter’’ that had been publicly disclosed by the inventor or a joint inventor. There is no requirement under AIA 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor (e.g., patenting, publication, public use, sale activity) be the same as the mode of disclosure of the intervening grace period disclosure. There is also no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbisdisclosure of the intervening grace period disclosure. What is required for subject matter in an intervening grace period disclosure to be excepted under AIA 35 U.S.C. 102(b)(1)(B) is that the subject matter of the disclosure to be disqualified as prior art must have been previously publicly disclosed by the inventor or a joint inventor.

Most significantly, the USPTO also explained:

The subject matter of an intervening grace period disclosure that was not previously publicly disclosed by the inventor or a joint inventor is available as prior art under AIA 35 U.S.C. 102(a)(1).

Then the USPTO provided this example:

For example, the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1).

Let’s translate this example given by the USPTO. Inventor A invents and discloses a jacket that uses a Velcro closing mechanism. Inventor B subsequently, but before inventor A files a patent application, discloses a jacket that uses snaps as a closing mechanism. Then snaps used as a closing mechanism would be prior art to the patent application filed by inventor A. But a Velcro closing mechanism would be viewed as obvious in light of snaps because Velcro, like snaps, is simply a closing mechanism. Therefore, it is likely that inventor A would not be able to obtain a patent on the disclosed invention as the result of an independent, slightly different disclosure. Thus, it seems that the grace-period will only be useful in the limited, and extremely unlikely, situation where the subsequent disclosure is nearly identical to the first disclosure.

What does this mean? It means that first to file absolutely needs to be treated as file first! While we do not now have a pure first to file system, anyone who relies on the existence of a grace period really is foolish in the extreme. File first. File often. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together.

For more information on the basics of patent law please see:


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One comment so far.

  • [Avatar for Lawrence S. Cohen]
    Lawrence S. Cohen
    June 8, 2014 02:25 pm

    Really well and clearly explained, thanks.