Filing a patent application is often an early goal for a start-up. But when is the right time to file? Adapted from the words of author Daniel Pink, timing is everything and everything is timing.
Having a patent application on file can protect your inventions, but if done at the wrong time, it can also weaken or even destroy the possibilities for protection.
The provisional patent ticking clock
A patent application is often filed as a provisional application. This starts the protection clock ticking because the filing date denotes the cut-off for where prior art takes effect. However, the filing starts another clock going – the one-year clock. At the end of the year, in order to claim that earlier priority date, a non-provisional application is filed based on the earlier provisional. The non-provisional application is the one that will be examined by the patent office to determine if the invention is patentable and if the application includes sufficient information to describe and enable others to make and use the invention. Thus, at the point of its filing, all data and other description of the invention should be included.
- Do you have a reasonable idea of the direction and purpose of your work?
Filing something early but amorphous may not provide a strong enough foundation to support your later focus as your R&D hones in on key elements and features.
- When will you have data to support the patent claims?
While experimental data is not a requirement in all countries, data such as unexpected and synergistic results can help support stronger and broader claims.
- Is someone chasing your tail or already pulling ahead?
The competitive landscape may necessitate some early filings to grab the earliest priority date before it goes to your competitor and then employing creative strategies to mitigate the likely ramifications of filing on the early-side relative to your R&D progress.
The PCT publication ticking clock
For coverage throughout the world, companies often take the PCT route. An application under the Patent Cooperation Treaty (PCT) permits a single application filing to develop into patents in multiple countries around the globe. PCT applications publish at 18 months from the earliest claimed filing date. This publication is accessible to all and fairly easily located on the internet. Similarly, if you have filed a US application (non-provisional), it too will publish at the 18-month mark.
What does publication mean for you? Once published, the application is prior art – not just for others, but it can be so for you too. For example, take the scenario where the PCT application discloses the use of a therapeutic for a laundry list of diseases, but doesn’t provide sufficient depth to get claims on the majority of the listed conditions. Then 2 years down the road, your company begins focusing on one of the diseases on the list, the earlier PCT can be prior art for the use of the active ingredient to treat that disease. This can prevent you from obtaining broad claims.
- Consider (with your patent attorney) whether the laundry lists of components, uses, disease treated and the like are going to provide you breadth and depth in your patent claims and which may instead act as ticking clocks for creating prior art.
- Consider filing new applications on related subject matter before the PCT publishes.
- There may be a strategic reason for filing a broad disclosure in the PCT to use as a defensive play against competitors by creating prior art against their potential filings.
The ticking clock of your own public disclosures
Many startups get out there and put their inventions front and center to gain visibility in the market and interest from potential investors. However, disclosures made without an arrangement for protecting confidentiality can act as prior art. In the US, inventors have a one-year grace period to file a patent on the publicly disclosed material, but not so in all other jurisdictions. Most countries in Europe do not provide the same grace period for prior disclosures. Other countries have a 6-12 months of grace period, but also require some specific circumstances governing the disclosure. More information on the nitty-gritty for each country can be found here.
Disclosures come in many forms – oral presentations, slide decks, websites, and social media postings are all examples. In addition, providing products to the public for testing or market research can also create a prior art trail.
- When are you planning to make presentations to potential investors?
- Will you be giving a pitch or other type of presentation at the conclusion of your incubator or accelerator program?
- What information about your products and technology is on your website and social media feeds?
- Consider filing provisional patent applications prior to these types of public disclosures to protect worldwide rights.
Time will always continue to tick by, but with a little foresight and planning, you can align those ticking clocks with your R&D and disclosure plans to provide a strong and competitive IP protection strategy.
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.
 Daniel Pink, When: The Scientific Secrets of Perfect Timing