Your Patent Clock is Ticking: 3 Activities that Trigger Patent Filing Deadlines

(Note: This article was originally published by Entrepreneur Media, Inc. at https://www.entrepreneur.com/article/357155 Copyright 2021 by Entrepreneur Media, Inc. All rights reserved.)

If your business develops inventions to maintain its industry leadership, you need to understand critical deadlines that may prevent you from protecting those inventions.

There are three important activities that automatically trigger a 12-month deadline in the United States for filing a patent application to protect your invention. In most situations, if you miss this deadline, you forfeit the ability to protect the invention. This means your competitors can freely use that invention in their products because you can’t protect it with a patent.

Unfortunately, many business leaders are unaware of this deadline and inadvertently lose potential patent rights to their inventions.

Too often, I’ve had to tell company leaders, “It’s too late to protect your invention.”

This news is particularly painful if the invention relates to the company’s core technology or critical innovation. Many leaders understand that patents are important, but are unaware of the 12-month patent filing deadline.

To avoid this forfeiture of patent rights, here are the three activities that you must monitor.

  1. Public Disclosure of Your Invention

If your invention is disclosed to the public, the 12-month deadline is triggered. Public disclosure of an invention can happen through trade shows, published white papers, online articles, public announcement (and description) of the invention, online video descriptions, and any other public activity that describes the invention. If you make a public disclosure, take action to file a patent application within 12 months of the earliest disclosure. If patent application costs are a concern, a provisional patent application can satisfy the 12-month deadline.

Be sure everyone in your organization understands this 12-month deadline. If someone accidentally makes a public disclosure of an important invention, encourage them to disclose it to company leaders so they can take appropriate action.

Although the United States offers a 12-month “grace period” after a public disclosure of the invention, many other countries don’t offer any type of grace period. So, although a public disclosure in the United States can be protected within 12 months, a better practice is to file a patent application prior to any public disclosure.

  1. Sale of a Product Containing the Invention

If an individual or organization sells a product that contains an invention, that activity triggers the 12-month patent filing deadline. If you don’t file a patent application within the 12-month period you forfeit your right to file a patent application covering the invention contained in the product.

Your organization can avoid this headache by performing an “invention check” before selling a product. This includes identifying any inventions contained in a product before selling the product to a customer. I’ve worked with many companies that add an “invention check” item as part of the final product approval process. This ensures that someone considers all inventions in a product and the company can take action to file a patent application if necessary.

  1. Offer to Sell a Product Containing the Invention

Similar to the sale of a product discussed above, merely offering to sell a product can trigger the 12-month patent filing deadline. Therefore, it is important to be careful when offering a product for sale even though the product may not be delivered until a future date. Just the offer, without an actual sale, can trigger the patent filing deadline.

In some cases, the offer to sell a product that includes an invention may require that the invention be ready for patenting. To be safe, assume that any invention in a product offered for sale is ready for patenting and the 12-month deadline is triggered.

I advise clients to perform an “invention check,” discussed above regarding the sale of a product, before offering a product for sale. By performing this activity prior to offering a product for sale, it typically covers sales of the product too.

Patents that protect critical inventions are valuable business assets. Don’t accidentally forfeit your patent rights by failing to identify the activities that trigger the 12-month patent filing deadline. Add reminders for these deadlines in the product development process and in the final product approval checklist. And, review all marketing materials, publications, trade show appearances, and other public activities to be sure that any deadline created by the public disclosure is recorded and monitored.

Get your entire team involved in this process and encourage them to disclose any activities that may trigger the 12-month patent filing deadline. I recommend designating a person or group within your organization to receive and monitor these important activities.

Do you have questions about how to strengthen your IP portfolio?  I can help.

Contact Me to schedule a free introductory call to be sure you don’t forfeit any critical patent rights.

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