Considering patenting your "secret sauce" technology? The patent system’s unforgivable deadlines and how to efficiently avoid dedicating your inventions to the public (including your competitors)
It should come as no surprise that you cannot patent your technology if someone else already filed a patent application on it or released it out into the world. But less obvious to many entrepreneurs, inventors, and emerging company executives is the danger that your own business activities can permanently prevent you from patenting your own inventions.
Publicly disclosing your invention, selling a product or service that incorporates your invention, and even unsuccessful commercial offerings trigger unpardonable deadlines that will dedicate your invention to the public domain and preclude you from ever obtaining patent rights. Importantly, triggering sales and offers for sale include those made in secret—but they do not include attempts to license the technology or secure investments to fund your technology-owning company. What exactly is a public disclosure can be a more difficult question: Broadcasting a product demo on Twitter or publishing in an academic journal certainly is, and explaining your invention to investors under non-disclosure agreement [NDA] certainly is not—yet in the middle is a large legal grey that should be avoided.
Ignore these triggering events at your own peril. In most of the world, patent rights are forfeited on the same day that a public disclosure or sale is made. However, for those only interested in U.S. patent protection, the deadlines are a little less harsh: American patent law allows inventors a 12 month grace period after a triggering event.
But even if you do not foresee pursuing patent rights internationally, best practice is to get to the U.S. Patent at Trademark Office (USPTO) and file (at least) a provisional patent before any triggering event. Until such a filling occurs, all disclosures outside your company should be made under NDA, and anything that could possible be interpreted as an offer for sale (or pre-sale) of your technology should be scrupulously avoided.
Filing a provisional patent at the USPTO will hold the unforgivable deadlines (in the U.S. and abroad) at bay for a full year—provided that you file a formal non-provisional patent application within that year. And, if you do not ultimately file the formal non-provisional application, your provisional application will be abandoned and its contents may be retained as a trade secret. Although provisional patent applications have few formal requirements, deadlines are paused only for the inventive material that is adequately described in the provisional application. The invention must also be explained thoroughly enough that a “Person of Ordinary Skill in the Art” (which you can think of as the average engineer or scientist in the technological field, and patent attorneys refer to as a “POSITA”) can read the application and practice your invention.
Provisional patent applications generally fit into one of three categories: (A) “proper”, (B) “quick and dirty”, or (C) “eleventh hour”. Filing an (A) “proper” or at least a (B) “quick and dirty” provisional application is strongly recommended to preserve patent rights. However, even a (C) “eleventh hour” provisional application is significantly better than allowing triggering events to pass without filing anything at the USPTO. As a bonus, filing any provisional application will permit you to declare that your technology is “patent pending.”
(A) A “proper” provisional application is virtually always prepared and filed by an experienced patent attorney. This type of provisional application may resemble a formal non-provisional application, and reflects careful consideration of the business landscape, the existing technology known to the inventor, and the scope of what an eventually-issued patent might grant exclusive rights to. A “proper” provisional is the gold standard, but requires commensurate attorney time and payment.
(B) A “quick and dirty” provisional application should at least be reviewed and filed by an experienced patent attorney to ensure that the invention is adequately described and documented. This type of provisional application may include a hodgepodge of photos, computer aided design [CAD] drawings, hand drawn sketches, flowcharts, company white papers, or even PowerPoint pitches—in addition to short summaries of embodiments of the invention, how to make it, and how to use it. A “quick and dirty” provisional can often be effective in safeguarding your patent-to-be from triggering events at a discount, but it is not optimal and not without its risks.
(C) An “eleventh hour” provisional application should be considered a measure of last resort. Is your academic paper scheduled to publish tomorrow? Do you have a VC presentation coming up next week where the prospective investors won’t sign an NDA? Are you broke and planning to launch your Kickstarter campaign next month? Are you panicking as you read this article? You can just file the relevant documents as a provisional before a triggering event occurs ,or least before the one-year U.S. grace period expires. An “eleventh hour” provisional may preserve only limited portions of your inventive ideas for future non-provisional patent filings, but for $75-300 in USPTO filing fees (depending on your income level and company size), it’s almost always better than doing nothing. It is wise to check in with an experienced patent attorney promptly after filing an “eleventh hour” provisional to see if your IP position may be significantly improved with a follow-up filing of a “proper” or “quick and dirty” provisional.
In many aspects of business and life, an ounce of prevention is worth a pound of cure. Patent law is different: If you fail to meet patent laws’ unforgiving deadlines and inadvertently dedicate your “secret sauce” technology to the public, there is no cure to be had. The ounce of prevention is all you can get. If your business success depends on innovative technologies, be mindful of triggering deadlines and make sure you timely file provisional applications—even if you have not decided that you will ultimately seek patent protection in the future.