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By Richard Gearhart
Founding Partner

A patent application must be filed within one year of your first public disclosure in the U.S., and before any public disclosure if you plan to file in other countries.

At Gearhart Law, we believe in keeping the patent process easy and simple for our clients. Call one of our experienced patent attorneys at 908-273-0700 today for more information.

As an entrepreneur, there are many places to put your time and money.  If you decide to file a patent application, when is the best time to do it?

You may have heard that you have a year to file your patent application, which is true in the U.S., but the patent rules on timing are different for the U.S. than for other countries.  In the U.S., you have a year from the date of the first public disclosure, meaning the first time you told anyone about your idea, to file your patent application.  The rules vary in other countries, but many require that you file the patent application before you tell anyone about your idea, or they have shorter time periods than a year.  Therefore, if you want patent protection in the U.S. only, you can wait a year to file your patent application after your first public disclosure.  If you think you may want protection in other countries, you need to file your patent application before you publicly disclose the idea to anyone else.   Filing your patent application in the U.S. counts for other countries too, so even if you file only in the U.S. before publicly disclosing your idea you will have preserved your right to file globally.

What if I need to tell someone, like a prototyper, about my idea before I file the patent application?  You can do that if you have them sign a non-disclosure agreement.  The patent filing date rules pertain to public disclosures.  If you have someone sign a non-disclosure, or secrecy, agreement, then any discussions you have about your project don’t count as public disclosures and you retain your patent rights.  If you hire a patent attorney to draft and file your patent application, you can discuss the idea and be covered by attorney client privilege, so those conversations are not considered public disclosures either.

Before you get that far in the process, though, at Gearhart Law, when an entrepreneur or inventor wants to patent an idea, we suggest a patent search first.  When we conduct a patent search, we look for any patents or published patent applications world-wide.  Why world-wide?  Because any patent anywhere that describes your idea can prevent you from getting a patent on it, even if you just want to patent it in the U.S.  When we submit your patent application to the USPTO, the United States Patent and Trademark Office, the patent examiners there look at all patents and applications world-wide and use the content in them to challenge your application.

If the patent search is successful and we think you have a good chance of getting your patent application accepted, the search also gives us an idea of what other patents and applications (called prior art) the USPTO examiner will be using to challenge your application, and we can write arguments in the application that show how your idea is novel compared to the prior art.

About the Author
Richard Gearhart, Esq. is the founder of Gearhart Law and the host of a weekly radio show for entrepreneurs called “Passage to Profit”. He has built a firm with an international presence that helps entrepreneurs from around the world with their patent, trademark and copyright needs. Richard commands a breadth of experience that comes from nearly 30 years of practice in the writing and prosecution of hundreds of patents, and in all aspects of Intellectual Property law. In 2022, Richard was recognized by ROI New Jersey as a 2022 ROI Influencer in the Law List category for being one of the best of the best in New Jersey for intellectual property law. Gearhart Law emerged from Richard’s passion for entrepreneurship and startups and his belief that entrepreneurship grows the economy and creates jobs. When we started Gearhart Law, our goal was to help and support the new business ventures of 500 entrepreneurs and inventors. After 12 years, the firm has far surpassed this goal; today, we look forward to helping even more inventors and entrepreneurs get off to a great start and reach their own goals.