Inventors are not required to file a patent application before marketing their invention (i.e., product or service) to others. However, doing so is not the recommended course of action because the inventor could lose their patent rights due to the first to file rule. A third party may see the invention, make a slight modification to the invention and file a patent application. If the inventor subsequently files a patent application, then under the first to file rule, the inventor (you) will lose your patent rights because the USPTO looks solely at the filing dates of the patent applications to determine who will be awarded the patent. The third party will be awarded the patent.
The United States technically provides inventors one year to file an application from the first instance of any one of the following three (3) triggers, namely, (1) public use, (2) offer for sale and (3) printed publication. The public use trigger encompasses any public demonstration and sometimes demonstrations to a small group of individuals. The offer for sale includes an actual sale of your product and also any offers even if such offer was rejected. The printed publication trigger involves a publication of a brochure or website describing your invention.
Even though the United States technically provides one year to file an application, I recommend that any application that you file be prior to any of the triggers mentioned above. The reason stems from the harsh results of the first to file rule. The patent office looks solely at the filing dates of the two respective patent application to determine who wins. This means that anyone that learns of your invention because of your marketing efforts (i.e., public use, offers of sale and website/brochure) can make a slight modification and file a patent application on their own. The Patent Office would consider that person’s patent application to be prior art against your application thereby denying you a patent. The third party was the first to file. You may institute a derivation proceeding to overcome the other person’s patent application but the derivation proceeding is costly and difficult to prove. As such, although you may be justified in being awarded the patent, the costs of the derivation proceeding and the risk of losing would most likely not be advantageous to you.
Also, if you do choose to use your invention in the public’s view, offer your invention for sale or distribute a printed publication (e.g., brochure or website), you will waive your ability to seek foreign patent protection in most countries throughout the world. Most foreign countries require inventors to file first before any of the three triggers mentioned above.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.