Optima Law Group Blog

The Dangers of Waiting Too Long to File Your Patent Application

You are an inventor, and you think you have developed the NEXT BIG THINGTM. You are sure that your product will be popular, and so you think you will want to file a patent to protect it eventually, but you are less sure that you want to file for a patent right now. You have spoken with friends and poked around online and you think you have a pretty good idea of when you would like to file your application. While lot of the “advice” in this area isn’t inherently wrong, it does tend to gloss over or ignore many of the dangers that are associated with waiting too long to file a patent application. Below, we attempt to clearly articulate the biggest problems that can arise if you wait too long to file your application.

1.       Getting scooped.

  • Under the new “first inventor to file” system in the United States, if someone independently comes up with your invention, or some critical part of it, they will be free to file for a patent of their own. If they do so, not only will it prevent you from patenting your idea, it will prevent you from profiting from it AT ALL. This is obviously the worst case scenario, so you need to ask yourself, what are the odds that no one else IN THE WORLD is trying to solve the same problem that you are?

2.       The Ticking Clock.

  • If you want to earn an enforceable patent in the United States, you must file your application within one year of the day you publically disclose your invention. The problem is that it is very easy to accidentally disclose your idea.
  • Have you described it in a printed publication, used it in public, or offered to sell it? All of these will likely start the 1-year clock. The important thing to remember is that whether or not something counts as a disclosure is very “fact dependent.” Did your Kickstarter campaign count as a sale or offer to sell? What about the market research you did using your prototype? Or what about your discussions with a potential manufacturing partner? Depending on the facts, any or all of these scenarios can start the clock. For this reason, it is always a good idea to call a patent attorney before you tell anyone new about your invention.

3.       Global rights.

  • Unlike the United States, most foreign countries do not have a one-year grace period following a public disclosure. If you disclose your idea, even accidentally, before you file a patent application, you will NEVER be able to protect that invention in those countries. While you can certainly still try to sell your invention in those foreign markets, there will be nothing to stop your local competition from swooping in and knocking off your product.

While there are certainly good reasons to wait before filing a patent application, it can be helpful to know the risks involved in doing so. The good news is that there are a number of options available, beyond a standard Utility Patent Application, which can help you avoid these problems without a substantial upfront cost. A good patent attorney will be happy to walk through your options and help you avoid the potential pitfalls described above. While it may still be in your best interest to delay in filing your patent application, it is never too early to fully explore your options.