You should file your patent application as soon as possible if there is a valid business justification. However, in most circumstances, I recommend doing your due diligence first to find out if filing a patent application or seeking a patent is in your best interest.
You can read more about how to do your due diligence in my other article: When should you file a patent application?
What types of business justifications warrant filing a patent application sooner than later?
Valid business justifications may include:
- Your invention is in a fast-moving technology.
- You have information that someone else will file a patent application very soon.
- You want to have the earliest priority date possible for your technology.
In these cases, you might forego your due diligence (e.g., novelty search) and file a patent application first.
Why should you file a patent application ASAP for fast-moving technology?
You should file a patent application ASAP for fast-moving technology. You won’t be able to conduct a reliable patent search for fast-moving technology.
Most patent applications remain secret or hidden from the public for the first 18 months after filing. Patent applications only become public when they mature into a patent or publish as a pre-grant publication.
As such, conducting a patent search to do your due diligence would be fruitless in this scenario. You wouldn’t be able to find the most recent prior art. It may be better to file the patent application first without doing a patent search.
Why should you file a patent application ASAP if someone else will file a patent application very soon?
You should file a patent application as soon as possible because the United States is a first-to-file system. The first inventor to file is awarded the patent. If you are the second file, that other person will be awarded the patent, not you.
Many situations exist where you might get wind that someone else will file a patent application soon.
For example, when you have a business partner and there is a falling out between you two. Generally, it’s common that one of the business partners will hurry to file their own patent application on the technology.
You may feel that it’s unfair and that having the ability to sue your partner in the future is enough. However, it’s best to just be the first to file. That way, you own the technology, not your ex-business partner.
Otherwise, you may find yourself having to spend money to litigate the issue without any guarantee of success that you will get ownership of your technology back from your disgruntled ex-partner.
Why should you file a patent application ASAP just to have the earliest priority date?
You should file a patent application as soon as possible because the one with the earliest priority date is the one who is awarded the patent. They won the race to the patent office
To get the earliest priority date, some companies have a practice of filing serial provisional patent applications throughout the development phase of the product.
Remember, you have one year from the filing of your first provisional patent application to file a nonprovisional application. As such, these companies would file multiple provisional patent applications for one year and on the 1-year anniversary file an omnibus nonprovisional patent application which incorporates all of the information in the previously filed provisional patent applications.
It would be cost-prohibitive to have a patent attorney file each of these provisional patent applications. However, if you had inventor’s notes and brief descriptions describing key features of the product, these notes and brief descriptions could be filed as a provisional patent application inexpensively.
When the nonprovisional is ready to be filed, the patent attorney can organize the information in the previously filed provisional patent applications and file it in the omnibus nonprovisional patent application. The nonprovisional patent application would claim priority back to the other provisional applications so that you would get the earliest priority date.
For some businesses, this is just good business practice.