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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[1].

Secondly – timing for revealing your invention is also crucial. An inventor should always keep in mind that novelty in patenting is global. Thatve never been disclosed to the public in any way (writing, presenting, selling, etc.), otherwise it will not be considered as NEW. If you have put a video on Youtube about your invention; how it is working, looks like, etc. you will not get a patent, as one of the patent requirements will not be met anymore.

And thirdly, even after applying for a patent (that means when your invention is already titled as "patent pending"), you still should think over your IP strategy and consider, when it is the best time to bring a new product to the market.

When the invention is already described in the patent application, it can be disclosed to the public. As the patent application, in general, is published 18 months after submission[2] (in some countries, the patent document is only published after the granting of a patent. In other countries, patent applications are generally published 18 months from the filing date or, where priority has been claimed, the priority date)[3], you can decide to disclose your invention before this deadline.

Furthermore, an applicant has only a limited time to extend the geographical scope of patent protection. Paris Convention for the Protection of Industrial Property[4] establishes a period of twelve months to submit patent’s subsequent designation. However, 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 do that in most countries – so 30 month from the priority date in total[5] (national laws may fix different time limit).

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 (if you have noticed any faults, decided to change your IP strategy and keep it secret, etc.). If you have decided to do that, and your invention is already disclosed in available prototypes, you will lose an opportunity to apply again for a patent for the same invention. You should also not forget this possibility.

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

Further questions are welcomed to info@iam.lt.

 

[1] http://www.mirror.co.uk/news/top-tens/10-inventors-who-never-made-2646656

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

[3] http://www.wipo.int/patents/en/faq_patents.html

[4] See Article 4.

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