So you have an invention and you want to file a patent application on it. When is the right time to do it?
Many people argue that you need to catch the date as early as possible. This makes sense since one needs to be the “first to file” to win the patent over others who may come up with the same idea.
The problem with rushing to the patent office as soon as you have the idea is that there is a requirement to provide an “enabling disclosure” of how to implement the invention. Very few inventors know how to make their invention when they first have the idea. Often, an inventor has to build a prototype of some kind or to generate a design specification in order to finalize the design and to work through all of the details.
But if you wait until the design is finished, someone may come up with the same idea and file a patent application first, no? Yes, but if all you have is the idea without the enabling disclosure, you can’t get a patent either. It is not sufficient to have an idea; you have to know how to implement it.
There is another issue here as well, one most inventors don’t consider. Once you file a patent application in one country, you have fixed for yourself a timeline for a family of patent applications around the world. So, before you file that first patent application, you need to know that you will be ready to file the follow on applications at the right time. This is a budget issue – will you have the money you need at the right time?
According to the Paris Convention, once you have filed in a first country, you have 1 year from that first filing to file “second” applications in other countries that are based on, and to take “priority” from the first application. Why is this important? Because without that priority connection, the first application could be cited against the later, second applications.
Many inventors don’t have enough money to file in many countries at the 1 year point. As a result, they may decide to file only in one other country. Others may take advantage of the PCT (Patent Cooperation Treaty) to gain up to another 1 1/2 years before having to file abroad. The PCT was created in the 1970s to help solve the problem of the lack of budget at the 1 year point. It is known as the “international patent application” and provides the same filing date for all countries signed on the treaty. Thus, if you file in the PCT on 1Jan2017, it is as if you filed in all the countries of the PCT on 1Jan2017.
Note that both the Paris Convention and the PCT set their deadlines according to the priority date of the first application. Thus, the timeline for actions, and thus your budget, is set by that very first filing.
The expiration date of a patent in a given country is also set by the filing date. It is 20 years from the filing date in a country. For some inventions, like those in fast-changing fields such as software, 20 years is significantly longer than the life expectancy of the product. But for other products, such as many consumer products, the product will still be sold 20 years later. And for still other products, such as pharmaceuticals, 20 years is too short. A pharmaceutical product takes 10 – 15 years from invention until the product is cleared to be sold to the general public and is still a viable product for many years after that.
Thus, depending on the type of product, I will consider the expiration date vs. when to file the application.
I will also consider WHERE to file the first application, in order to optimize the expiration dates. This is because the expiration date of the first application is about 1 year before the expiration date of the second applications (those filed according to the Paris Convention as well as those filed in the PCT). Thus, the second applications expire about 1 year AFTER the priority application.
This fact disturbed the US pharmaceutical companies for whom each extra day at the end of the 20 years is worth a fortune. They invented the “provisional” patent application in order to shift the relevant filing date by 1 year. The provisional patent application is a placeholder – it lives for 1 year, after which the applicant needs to file the utility application from the provisional application, thereby gaining a new filing date for the utility application, from which the 20 years is calculated.
Thus, for consumer products and of course, for pharmaceutical and other long-lived products, we advise the applicant to file a US provisional patent application first, to gain the extra year of protection in the US and to align the expiration dates of the entire family of patent applications and patents.
As you can see, the timing of important milestones in the life of a patent application and of a patent are defined by the filing date(s). Choosing a timing based on your objectives is an important part of your patent strategy.