International and US Patent Filing Deadlines: When Must A Patent Application Be Filed?

One of the biggest mistakes you can make is to ignore deadlines for filing patent applications, both under US patent law and the laws of foreign countries. These rules are commonly referred to as statutory bars. Inventors and companies who are unfamiliar with patents may unknowingly seek the advice of a patent attorney after it's too late. Do yourself a favor and follow this checklist so that you at least give yourself the option of maximizing your patent rights.

Go through these questions prior to publicly disclosing your invention. If you're going to err, err on the safe side. The following checklist can serve as a flow chart whenever you are considering patenting an invention.

1. Determine when you will make the first public disclosure of your product. If it is within your ability to hold off on this date, then this would of course be preferable. However, if you have commitments that require the invention to be disclosed at a certain date, then calendar this date and make sure to go through the remaining steps well before that date.

2. Determine whether you want to pursue foreign patent protection, or at least reserve the option. If so, then you need to consult with a patent attorney and get your patent application(s) filed before the date of first public disclosure. This is due to the requirement of most foreign countries known as the "absolute novelty bar." The absolute novelty bar is a rule adopted by most foreign countries which requires an applicant to first file a patent application before making any public disclosures anywhere in the world. This initial patent application need not be filed in the foreign countries as procedural mechanisms exist to allow an applicant to file first in the US, for example, and then file foreign/international patent applications that claim priority (i.e., back-date) to the initial US filing. Certain foreign countries have special exceptions for certain types of events, such as trade shows, and allow for a patent application to be filed within a set period of time after such event(s). However, these rules are specific to each country, so it's best to consult with a patent attorney who can gather accurate information from foreign patent associates who practice in the jurisdictions of interest to you.

If you do not care for foreign protection and see no need to even reserve this option, then US patent laws essentially give you a 1-year grace period for filing a patent application. 35 USC 102 states that a patent application must be filed in the US within one year from the earliest date of public disclosure or offer for sale in the US. This can be tricky because so far we've only been discussing public disclosures. However, in the US, you need to be mindful of the earliest date of a public disclosure or offer for sale. Thus, the offer for sale need not be public. Whichever of these two events occurs first, you will have one year to file your patent application in the US. Otherwise, you will surrender your patent rights in the US.

3. The third consideration is more of a practical issue than a legal one. Are you concerned that a third party who sees your invention might file its own patent application? If so, then get your patent application filed before making any public disclosures or offers for sale, or doing any other activity that exposes your invention.

If there's any concern that your patent rights may be in jeopardy, then make sure to consult with your patent attorney well in advance of your intended date of disclosure or offer for sale so that you can plan an appropriate strategy for patent protection.