Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

Speaker 1: We’re a patent and trademark law firm. We help inventors, business owners, and startups explore patent protection, trademark protection, and IP. We also offer copyright and trade secret analysis. The topic for today is how to protect your invention before filing your application. We’ll get to that in just a few minutes.

Speaker 2: We are attorneys, right, Matt? You’re still licensed?

Matt: I am still licensed.

Speaker 2: Excellent, as am I. We’re not your attorneys yet, but we’d like to be. If any clients are on, we are your attorneys, but let’s not discuss anything confidential today.

Speaker 1: We got a question from someone who just had a consult with Michael. They asked, “I haven’t filed yet, but I’ve done some activities. Am I protected? What do I do if I’ve disclosed it or have a co-inventor?” It’s a great topic.

Matt: From my perspective, working with trademark clients who have patent questions, the one-year disclosure bar trips up a lot of clients.

Speaker 1: Yes, it does. Many folks don’t realize that the clock starts ticking once they publicly disclose their invention. The U.S. and a few other countries have a one-year grace period. If you publicly disclose your invention, you have one year to file a patent application. For example, if you disclose it today, you have until February 7, 2025, to file. If you file one day late, on February 8, 2025, your patent could be invalidated due to that earlier disclosure. The idea is to incentivize inventors to file promptly and share their knowledge while ensuring they get their reward.

Matt: Exactly. Two main actions can start that clock: public disclosure and offering the invention for sale. Even if you don’t disclose it publicly, putting it on sale can start the timer.

Speaker 1: If I invent something, can I register it as a patent 10 years from now if I don’t tell anyone about it?

Matt: You can, but you risk someone else inventing it first. Large companies with R&D teams often keep inventions under wraps until they’re ready to file. It’s about timing and market readiness.

Speaker 1: That’s an interesting concept. A product might not be needed now, but 10 years later, it could be in demand. Filing too early might not be beneficial, but waiting could be risky.

Matt: True. Sometimes it’s about getting the patent filed to prevent others from doing so, even if you’re not ready to market it.

Speaker 1: Let’s discuss what qualifies as public disclosure. Public disclosure means sharing your invention where someone in your field could find it. Talking to your mom at the kitchen table isn’t public disclosure, but sharing it at a trade show or in a news article is.

Matt: What about non-disclosure agreements (NDAs)? If I take my invention to a company and have them sign an NDA, does that start the timer?

Speaker 1: If all parties are under an NDA, it doesn’t start the timer. However, an on-sale bar can still apply. For instance, if you make a deal with a manufacturer under NDA, it counts as an offer for sale, starting the clock.

Matt: Exactly. Even if it’s not public, making money from your invention more than a year before filing can prevent you from getting a patent. NDAs are crucial, but be mindful of sales.

Speaker 1: At trade shows, if you’re just showing your invention without giving out samples, it’s public disclosure. If you gave out samples, that would be worse.

Matt: If you have a co-inventor, have something in writing about who invented what. This is important during patent prosecution. You also might consider forming a company to separate personal liability.

Speaker 1: We often see clients whose inventions are still in the idea phase. They may need a co-inventor or engineer to finalize the invention. NDAs are essential in these collaborations.

Matt: Keeping a list of who you’ve disclosed your invention to is also important. If someone tries to fraudulently file a patent, you can prove derivation and reclaim your invention.

Speaker 1: On the trademark side, file early and often. Bad actors can file trademarks that aren’t theirs, and we often have to claw them back. Filing early prevents this and saves money.

Matt: You can hold a trademark application at the USPTO for up to 36 months after approval, giving you plenty of time to go to market. There’s no excuse not to file before launching your product or service.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/