It’s all in the timing – when to file a patent application

The timing of filing patent applications. There is much written on how and why to file a patent application. However, one of the most common issues companies and startups face relates to the timing of “when” to file. Too late – and you might lose right to the invention – too early and you may not have the invention and commercial plan ready to meet the time frames and costs dictated by the future stages of the patent process. Accordingly, timing can be a bit of a balancing act and considering timing of patent filings should form part of any IP Strategy.

Too Late – Loss of Rights

A patent application should be filed before any public or commercial disclosure of the invention. For example, the filing should be made prior to selling the invention or showing the invention on a company website or social media. Accordingly, in many instances, the timing of a patent filing is dictated by the timing of an upcoming sale, product launch, trade show or presentation.

From a commercial point of view patent filings are a bit “cart before the horse” because ideally it would be preferable to test the market before filings are made. In this respect, some countries (such as Australia and the USA) offer a “grace period” that, in effect, allows a valid complete patent to be filed within 12-months of the disclosure. However, a problem with grace periods is that many countries do not have grace periods or the grace periods are limited to specific time periods or types of disclosures such as trade shows.

Importantly, in most cases, a grace period generally only covers you for your own disclosure. So, if a third party copies and discloses the invention prior to your patent filing – then the grace period will likely not cover the third party disclosure. So, as a general rule, it is recommended that patent applications are filed – prior to public or commercial disclosure of the invention. It is worthwhile to note that most patent attorneys will take between 1 to 3 weeks to turn-around a provisional patent application (if you would like it done properly) – so also bear this in mind of you have a disclosure on the horizon, and plan to engage your attorney well in advance.

However, if you do not have an imminent reason to disclose your invention – when is the right time to file?

Too Early – Not Commercially Ready

Patents are a first-to-file system – meaning that the first person to file a patent for an invention is considered to be the ultimate owner of that invention. This means that delaying a patent filing may mean that a third party could file an application before you and you may lose right to the invention. I have seen this happen in the ICT and mining fields only on a few occasions – however, often, this can make you feel pressured into a patent filing when perhaps you are not ready such as the invention still being in its infancy or the commercial viability having not been considered.  This “rush” for an “early filing” can result in poor quality “speculative” provisional patent applications being filed which create their own issues. Nevertheless, from a “legal” perspective – an earlier patent filing is generally best.

However, in my view many patents are filed too early and when the invention is still more of an “idea” rather than an “invention”. Patents, even a provisional patent application, require that the invention is described in sufficient detail so that a person skilled in the art can work the invention with only minimal trial and experimentation. You don’t need to have built or even tested the invention – but, you do need to give sufficient detail as to how the invention works so that someone else could actually make the invention. If this detail is not provided – then you may lose the filing date and hence any advantage of an early filing. I have seen some terrible speculative provisional patent applications filed that have been cobbled together without much thought or detail – and clearly filed too early. These applications would almost certainly not be entitled to the original filing date and therefore negate any advantage of an earlier filing date.

An often overlooked issue with early filing is that it starts the clock in terms of when subsequent applications are due to be filed. The patent process is very deadline driven and once you have started you generally need to continue otherwise your rights may be lost. For example, an international (PCT) patent application is due 12 months from the first filing date and then subsequent national phase entries are due at 30 months from the first filing date. Both the PCT and national phase entries  can incur substantial costs and if you file early, such as before you have started the product design or scheduled manufacturing, these costs will come sooner and perhaps out of step with commercial activities such as testing the market.

Accordingly, if possible, consideration should be given to the timing of patent filing in step with commercialisation of the invention. For example, you may like to have a business plan, prototype or funding sources at least initially planned prior to filing. We often recommend the first filing is a provisional patent application as this allows testing the commercials such as disclosure of prototypes during the initial 12-month provisional patent period prior to the next steps of the patent process falling due. This way you can get feedback early and make changes if required.

The Right Time – a Balance

The right time to file a patent application can be a balancing act – on the one hand we do often seek to file as early as possible to secure the earliest filing date, and on the other hand  it can be a mistake to file too early as you start the “clock” and the patent process can outrun you commercially. Of course,  if you must publicly or commercially disclose the  invention – then the timing is dictated by the timing of the disclosure and it is important that you a ready to file a patent application at this point. Accordingly, the timing of filing for patent applications will be specific to the circumstances and should be given due consideration during the initial IP strategy process for the invention.