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.
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.