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You are here: Home / Patent application process / Before filing a patent application / When should you file your patent application?

When should you file your patent application?

December 11, 2022 by James Yang

Startups want to file their patent application as late as possible to delay patent expenses. However, they could jeopardize their patent rights by pushing the delay to the limit.  They tend to delay the patent process so much that they are now too late.  They can’t get a patent.  They’ve dedicated their invention to the public.  Oftentimes, the right time to file the patent application is immediately after doing your due diligence.

Here are four essential steps for your due diligence.

Step 1: Do a novelty search to determine if your invention is new

Step 2: Build a prototype to show proof of concept

Step 3: Write a business plan to determine if you can make money on your invention

Step 4: Commit to launching your product

You should file your patent application sooner than later if your due diligence is positive.  Nothing good comes out of delaying the patent process.  All you’re doing is increasing the risk that others will steal your idea or that your patent application will be rejected.

Let’s discuss each step in more detail.

Step 1: Do a novelty search to determine if your invention is new

You can determine if your invention is new by doing a novelty search. I recommend that you initially do a free search on Google. It’s what I call a Google image search. Go to google.com and type in a few keywords about your invention. At the top of the search results, you have the option of browsing the search results as images. Click on the Images link at the top of the search results page. Look through the various images to find your invention. The Google image search should take no more than a 1/2 hour.

If you find something identical to your invention, then the patent process stops here for you. You can’t get a patent.

If you don’t find anything, then you have the option of diving deeper. You can complete a patent search as taught by the United States Patent and Trademark Office.  They published a tutorial called the 7-Step Patent Search Strategy.

If you still don’t find anything after completing the 7-Step Patent Search Strategy, you can hire a patent attorney to conduct the patent search to confirm your results.  I invite you to contact me to conduct a patent search for you.

Your invention is new if you do not find anything after you complete the novelty or patent search discussed above. If that’s the case, you may want to file a patent application at this point.

Other articles of interest:

  1. What is a patent?
  2. What is a patent application?
  3. Should you file a provisional or nonprovisional patent application?
  4. Should you file a utility or design patent application?

Step 2: Build a prototype to show proof of concept

A prototype shows proof of concept. It shows that your invention works as intended. You might wonder why you need to build a prototype for even a simple invention. However, I can’t tell you how many times I’ve held even the simplest of inventions and understood the nuances of the product or invention better as I was handling it.  It helped me to write the patent application more convincingly.

Also, when you have a prototype, you can show the prototype to investors and your manufacturer so that they can grasp your invention faster. You don’t need to tell them what your invention is. You can show them what it is.

Sometimes, prototypes can be very expensive to build. In these instances, I don’t recommend that you build them but at least have a 3D model design so that others can see your invention.

You should consider filing a patent application if the prototype shows proof of concept.

Step 3: Write a business plan to determine if you can make money on your invention

You should write a business plan for your invention. If you can’t convince yourself on paper that you can make money, you probably can’t make money in the real world. Also, if you have a partner, they would want to see your research to show that there is market demand and that money can be made with your idea.

You should consider filing a patent application if you believe that you can make money on your invention.

Step 4: Commit to launching your product

  1. Have you committed to launching your product?
  2. Do the other steps show that you should launch your product?

If you’re not committed to launching your product, don’t file the patent application.  I’ve seen so many people get started but because they haven’t committed to launching their product, they waste their money.  Or, if the other steps show that you shouldn’t launch your product, then don’t file the patent application.

However, if the answer to these two questions is YES, then there really isn’t a good reason to delay filing your patent application. Get together with your patent attorney to figure out when the optimal time might be to file your patent application.  Delaying the patent process only increases the risk that more prior art will come into play or competitors will first to market.  They will block you from getting a patent.

What is the optimal time to file your patent application?

The optimal time to file your patent application varies based on your particular situation. Sometimes, you need to do more research to figure out how your invention actually works so that we can explain that in the patent application. In other circumstances, although your design isn’t completed, you have enough information to have the patent application written so that we can get you the earliest priority date for your invention.

When is it too late to file your patent application?

The United States gives you a one-year grace period

In the United States, the latest that you can file a patent application is one year after your first offer for sale, printed publication, or public demonstration. The one-year time frame is considered the one-year grace period.  After one year, you can not get a patent for your invention. You have dedicated your invention to the public.  You must file your patent application before the 1 year grace period expires.

Foreign countries require absolute novelty

If you are interested in securing patents in foreign countries, your patent application must be filed before you start your marketing efforts.  Legally speaking, this is referred to as absolute novelty.

Marketing efforts refer to any offer for sale, distribution of a printed publication or publicly demonstrating your invention.

As such, you must file your patent application before any outward marketing efforts.  If you do tell others about your invention, you need to do so under a nondisclosure agreement.

What is the earliest you can file a patent application?

The earliest you can file a patent application is as soon as you know how to make and use (i.e., enablement requirement) the invention.  If you can describe how to make and use it, you can apply for a patent application.  At that point, your idea isn’t just a pie-in-the-sky goal.  Rather, it’s become your invention.

However, just because you can file a patent application, doesn’t mean that you should.  Do your due diligence as I’ve explained above.  You should file your patent application after you’ve done your due diligence.

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Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

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