Time is of the essence when it comes to securing a patent for your invention. Delaying or mishandling key patent application steps can result in losing your rights entirely. Below are three critical patent timing mistakes that could jeopardize your intellectual property.
Mistake #1: Delaying Your Patent Application After Disclosure
One of the biggest patent application mistakes is waiting too long to file after disclosing your invention. While the U.S. allows a 12-month grace period for filing a patent application after public disclosure, relying on this window is risky.
The Risk of Third-Party Filings
Once you publicly disclose your invention, anyone can modify it and file their own patent application. If they secure an earlier filing date, you may lose the ability to patent your original concept. This risk is especially high if your disclosure occurs at a trade show, in an academic paper, or online.
Common Disclosure Pitfalls
- Trade Shows & Public Demonstrations: Presenting an invention at a trade show exposes it to thousands of people, any of whom could make slight modifications and patent it before you do.
- Online & Published Content: Blogs, research papers, or even social media posts revealing your invention can be used as prior art against your patent application.
- Crowdfunding Campaigns: Many inventors launch crowdfunding campaigns to secure funding before filing a patent application. If more than 12 months pass after launching, you may lose the ability to patent your product.
- Business Deals & Agreements: Even semi-private agreements, like supplier contracts, can be deemed public disclosures. For instance, a 2019 Supreme Court case ruled that Teva lost its patent rights due to a supply agreement signed more than 12 months before filing.
Solution: File your patent application as early as possible, preferably before any public disclosure. If you must disclose, keep it under non-disclosure agreements and file a provisional patent application beforehand.
Mistake #2: Missing Key Patent Deadlines
Another major pitfall is missing critical deadlines associated with your patent application, which can lead to abandonment or loss of rights.
Commonly Missed Deadlines
- Provisional to Non-Provisional Conversion: A provisional patent application provides a 12-month period of patent-pending status. If you fail to file a non-provisional patent application within this timeframe, you forfeit the original filing date.
- Patent Maintenance Fees: Once granted, patents require maintenance fees at 3.5, 7.5, and 11.5 years. Missing these payments can cause your patent to lapse.
- Application Filing Deadlines: If you fail to respond to office actions or legal deadlines, your patent application may be abandoned.
The High Cost of Missed Deadlines
A single missed deadline can be devastating. The pharmaceutical company MDCO lost four and a half years of market exclusivity — worth millions of dollars — because their law firm missed a patent deadline by just one day.
Solution: Work with a patent attorney who has a robust docketing system to track all deadlines and ensure timely filings.
Mistake #3: Filing an Incomplete or Poorly Drafted Patent Application
Filing a weak patent application can leave your invention vulnerable, reducing its enforceability and limiting its protection.
Dangers of a Poor Patent Application
- Losing Your Priority Date: If your application lacks essential details, it may not be granted priority. A competitor who files a more complete application can claim rights over your invention.
- Easier Workarounds for Competitors: If your patent claims are too narrow, competitors can modify your invention slightly and avoid infringement.
- Higher Rejection Rates: Poorly drafted applications often face more scrutiny and rejections from patent examiners.
- Weak Litigation Standing: Inadequate disclosures may cause your patent to be invalidated in court.
A notable case, Novozymes, lost its patent rights because its provisional application did not contain enough detail to support its later non-provisional application. This oversight cost the company millions.
Solution: Work with an experienced patent attorney to draft a strong, technically detailed, and enforceable patent application.
How to Protect Your Patent Rights
To avoid these costly mistakes:
- File early, preferably before any disclosure.
- Track all deadlines to prevent lapses in your application.
- Ensure technical completeness in your patent filings.
- Consult a patent attorney for professional guidance.
If you need assistance with your patent application, our Austin-based patent law firm offers free consultations to help you secure your intellectual property rights.