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Punctuality in patents

Timing is everything. Even in IP field, timing is a very important issue. Strategy, of when your invention should see the daylight, must be clear and thought-out. There are inventions that brought no profit to the owner, just because at the moment there still was no market for it, or the representation was poor. One example – Douglas Engelbart came up with the idea for the computer mouse in 1968 and did patent it. But the patent ran out in 1987, before the technology became widely used. Since then, at least one billion computer mice have been sold.

Secondly – timing for revealing your invention is also crucial. An inventor should always keep in mind that novelty in patenting is global. Invention should never be disclosed to the public in any way (writing, presenting, selling, etc.), otherwise it will not be considered NEW. If you have put a video on Youtube about your invention; how it is working, function, etc. you might not get a patent granted for your own failure to protect novelty.

And thirdly, even after applying for a patent, you still should think over your IP strategy and consider, when it is the best time to bring a new product to the market. You will not have any legal protection of your invention untill it is officially published by the patent office.

When the invention is already described in the patent application, it can be disclosed to the public, because the inventor has the priority rights (nobody else can patent the same invention in any other country after the application is submitted). But as long as patent application is not officially published and freely available, no legal protection is granted. The patent application, in general, is published 18 months from the filing date or, where priority has been claimed, the priority date. Therefore, one must take the responsibility for disclosing the invention before the publication day, as other parties can manufacture the same invention untill it is not published.

Another aspect an inventor mush consider is a limited time to extend the geographical scope of patent protection. Paris Convention for the Protection of Industrial Property[2] establishes a period of twelve months to submit subsequent designations for a patent. The international application gives you a longer time period. If you will go through international filing (according to PCT rules), you will have additional 18 month to submit same patent application in most countries (total of 30 month from the priority date in total[3]).

The sooner you will make your invention public, the sooner you will see the success of your invention. Therefore, after applying for a patent, we advice not to keep your invention in secret anymore. At this stage, it is wise not to stop the process of manufacturing and to look for possible customers. Furthermore, when you start working on a prototype of the invention, you will also be able to understand the market better. It will help you to decide how wide you need to protect the invention (in which countries, how much you are going to invest, count possible profits, possibilities to sell patent, etc.). As you have only limited time to extend your patent application, it is also very important.

However, and this is one „but“, until the patent application is disclosed, you have a possibility to withdraw your application (for reasons such as any faults, changes in IP strategy, etc.). If you have decided to do that, and your invention is already disclosed in available prototypes, you will lose an opportunity to apply for a patent again for the same invention.

So keep all this in mind! And all the best in inventing!

Further questions are welcomed to

[1] After 18-month patent application is published in the official gazette and made available in patents‘ search engines.

[2] See Article 4.

[3] Patent Cooperation Treaty Article 22, para. 1.