Don't Wait Too Long to File for a Patent

As a patent lawyer, I was excited to come across a Wall Street Journal article the other day about patent strategies, but the title - "Four Reasons Entrepreneurs May Not Want to Get a Patent Right Away" - gave me pause. The "Not . . . Right Away" part suggests that you can wait as long as you want to file a patent application, which is reinforced by the highlighted quote advising that “you might want to put off getting a patent.” I would want entrepreneurs to also know that you shouldn't wait too long to file a patent application, as patent rights can be forfeited by virtue of statutory time bars.

In the United States, a patent on an otherwise patentable invention is barred if the invention was described in a printed publication, in public use, or on sale more than a year before a patent application is filed. Moreover, in most foreign jurisdictions there is no one-year grace period and patent rights are forfeited immediately upon the first disclosure, public use, or offer for sale if there no patent application on file. These time bars are intended to encourage the prompt disclosure of inventions and limit the statutory period of monopoly granted by a patent.    

In the WSJ article, the author notes that for a given business, there are various factors to consider when determining the best time to file a patent application, or whether to seek patent protection at all. Such factors include the costs to prepare and prosecute the patent application, the potential need to enforce any resulting patent, and whether other intellectual property protection, through e.g., trade secret law or trademark law, is more suitable. I would add the legal time bars to that list. 

Determining the best time to file a patent application involves a careful balance. Pursuing patent protection needs to be a worthwhile investment of time and money, and you generally get the best results when you file after the invention has been developed beyond just a general concept and important design considerations and product details have already been worked out. But entrepreneurs also need to be sure to file before any event that may trigger a time bar. No startup wants to inadvertently forfeit patent rights.