In an ideal world, startups could test their inventions in the market without needing to invest in a patent right away. That’s how it used to be until the America Invents Act (AIA) was passed in 2013. A provision in the AIA seems to offer inventors the ability to test market their invention. The AIA allows for a one-year grace period that allows inventors to publicly disclose their invention without losing patent eligibility. But this “grace period” is not the safe harbor it used to be. Now, it’s a very narrow exception, and relying on it can put an inventor’s rights at risk.
Here’s why.
Once you begin marketing your invention, any third party publication—even one showing minor differences from your invention—can be considered prior art. This holds true even for trivial or seemingly insignificant variations. Such publications will be prior art to your later filed patent application and can severely impact your ability to secure a patent.
Because of this, I strongly recommend filing your patent application before you start marketing your invention. Waiting to file introduces unnecessary risks that can be avoided.
Understanding the “Grace Period”: What It Actually Covers
The AIA’s one-year grace period creates two exceptions to what counts as prior art:
- The “Inventor-Originated” Exception: Any publication within one year before filing, made by the inventor or someone who obtained the information directly or indirectly from the inventor, is not prior art.
- The Prior Disclosure Exception: Any third-party disclosure made within one year before filing, which is the same disclosure made by the inventor or someone who obtained it from the inventor directly or indirectly but after the inventor’s disclosure, is not prior art.
On the surface, these exceptions seem to give inventors the freedom to disclose their invention, test the market, and wait up to a year to file. In practice, however, this approach is not recommended and is extremely risky because of the second exception, specifically, the Prior Disclosure Exception.
Let me explain.
The Danger of Third-Party Publications During Market Testing
When an inventor markets an invention, it doesn’t take long for competitors or others to notice. Here’s where the problem lies: if someone else publishes even a trivial variation of your invention during the one-year grace period and doesn’t attribute the invention to you, it’s considered prior art.
To disqualify such a third-party publication as prior art, you would have to show that the third party publication is the same as your prior disclosure. The MPEP 2153.01(b) clearly states:
The exceptions … do not apply even if the only differences between the subject matter in the prior art disclosure … and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations.
When Would the Grace Period Actually Be Useful
In reality, the grace period exception only benefits inventors who unintentionally disclose their invention, perhaps without realizing that they should get a patent for it. For example:
- Accidental or Unintentional Disclosures: An inventor might accidentally reveal their invention at a trade show, in an interview, or while showcasing a prototype, unaware of patent protection possibilities. The inventor can then seek patent protection very fast before the other person has a chance to file a patent application. Anyone at the trade show that tries to patent your same idea, would be blocked by your filing. Also, your disclosure at the trade show isn’t considered prior art.
This exception is designed as a safety net for inventors who accidentally disclose. The exception wasn’t designed to allow you to have a yearlong, risk-free period for market testing.
Practical Advice for Inventors and Startups
Given these limitations, inventors and startups should treat the one-year grace period with caution. Here’s some practical advice:
- File a Provisional Patent Application Before Marketing: A provisional application is a cost-effective way to secure an early filing date and reduce the risk posed by third-party publications. With a provisional on file, you have time to test the market and assess whether a full patent application is worthwhile, without risking the loss of patent rights.
Conclusion: Why the Grace Period Isn’t a Safe Harbor for Market Testing
The idea of a one-year grace period is understandably attractive to inventors and startups. However, the risks can be significant. A third-party publication—even if independently created or based on your invention—would become prior art to your later filed patent application even if it is just a trivial variation of your idea. The grace period exception is more useful as a safeguard for accidental disclosure, not as a market testing strategy.
For those actively planning to commercialize their invention, the safest approach is to file a patent application before any sort of commercialization. By taking these steps, you protect your invention and reduce the risk of losing rights due to unexpected publications during the one-year period.
Need Help?
We specialize in helping inventors and startups secure cost-effective, early-stage protection by filing provisional patent applications for them. This approach allows you to test your invention in the market without risking your rights.
Take the first step to safeguard your innovation. Schedule a consultation today or call us at (949) 433-0900 to discuss how we can help you protect your invention.