Lawyers and Settlements

Intellectual Property

When May One Apply for a Patent?

Time is important both as it relates to the activities of the inventor and the discoveries of others. Considering the possible history in the discovery of the wheel may help explain some of the time limits for patentability.

Initially, the first inventor of the wheel may have merely recognized the problems associated with moving large loads on rolling logs (the prior art). With only the recognition of the need for a better structure, a patent application would not yet be timely; a patentable invention had not yet been made.

A patent application is not proper until a working form of an invention has been fully conceived.

At a time when the complete invention is mentally pictured, that is, fully thought of in an operative form, the inventor may properly pursue patent protection. It is only then that a patent application can be filed with an enabling disclosure as required by law.

A US patent application must be filed within one year after the invention first is described in any publication, placed on sale, sold, or used publicly.

Continuing with the Cartwheel example, quite independently of any effort to obtain patent protection on the wheel, the inventor Mary might have published a description of her invention or she may have built a wheeled wagon and gone into the moving business. Such activities would raise another question of timing.. The US rule is based on the philosophy that the inventor abandons his patent rights if he does not file a proper patent application within one year from disclosure or commercial activity with respect to the invention or discovery. Typical of most areas of law, there are exceptions to the rule, as in the case of legitimate experimental use to perfect or develop the invention.

Any publication or public use of an invention that takes place before the filing of an application in the United States may block the inventor from obtaining a valid patent in some foreign countries.

Most foreign countries do not provide the one-year period of grace we have in the United States.

An inventor may keep his invention secret for a long time and still obtain a patent. However, a long delay in applying for a patent may result in the loss of all patent rights, which may go to a second independent inventor who acts more promptly.

An invention that is suppressed or concealed will not be prior art against a later applicant. The system is designed to encourage disclosure and thus punishes a concealer as against a later discloser. A careful record of an inventor's efforts to prepare an invention for disclosure will certainly help avoid a finding that the inventor abandoned, suppressed or concealed the invention.

So, it generally is wise to keep careful records of the invention and its development, and efforts to prepare it for public disclosure which should be signed by a witness, and to file an application for a patent at the earliest practical time, preferably before any public description, or commercial development or public use of the invention. The new "provisional patent application" makes it easier to complete a prompt filing.

Information on this page was supplied with permission of Bruce E. Burdick.

Patents | How to Obtain a Patent