Eighteen months of darkness
When an applicant files an application for a patent, the first publication generally is 18 months from that first filing date. The first date may be the filing date of the provisional application in the US or the priority filing in another country.
There are a few exceptions. On the quicker side, an application on Track One (accelerated prosecution track) may issue and therefore publish before the 18 months. On the darkness side, for US only filings, there is the possibility of a non-publication request.
Why does this all matter? When you are trying to figure out who else is out there doing something similar, whether a competitor has filed on a related idea or beaten you to the punch, you are looking at the present state of things as it was 18 months ago. It’s somewhat like the folks who study astronomy and explain that the light we see from stars is the light from many many years ago finally reaching us. Ok, patents are not that bad, but the theory is the same.
So when doing prior art searches, keep this in mind. Consider setting alerts or repeating key search strings on a regular basis.
Get comfortable with some uncertainty
The first type of uncertainty is the one already discussed, not knowing if someone has filed. Sometimes research publications, press releases, conference presentations and other announcements will hint that something is in the works. These disclosures or other competitor activities may activate your antenna that something is likely filed even though you can’t see it yet.
There is another type uncertainty even when something publishes, namely what is the scope of claims likely to grant. As already discussed in a previous posting, it is quite typical for the published claims to be significantly broader as compared to what eventually issues in the granted patent.
The first hint of a contracting claim scope usually comes for a PCT filing with the international search report and search opinion that publishes a few months after the PCT publication. Although these reports generally cite the low hanging fruit, the identified prior art helps predict certain limitations on the claims. But again, some uncertainty lurks in the direction the applicant will take as prosecution progresses. It may be another 12-24 months (or even more time for some countries) before claim amendments will be filed. Until then, it’s a bit of looking into a crystal ball (or there’s always the Ouija board).
There are advantages of dancing in the dark
The biggest one? Your competitors remain in the dark about your filings. If you want to stay in stealth mode for those 18 months, you can hold off on public announcements and presentations. Leave your competitors to stumble in the dark and keep the dancing on your side of the stage.
The content of this blog is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.