Public Disclosure - What Happens If Someone Files for a Patent Before You Do?

If an inventor disclosed his/her invention to his partners/university/employer, probably had some form of public disclosure, but did not have a provisional patent – what happens if a person with a similar invention had a provisional patent filed which could come after the first inventor’s disclosure? Which inventor gets the patent?

The inventor entitled to a patent would be the first inventor to file a patent application. This is known as the First-Inventor-to-File patent system that the US adopted in March of 2013. The only way that the earlier inventor can restore his/her patent priority to the invention in this scenario is if the earlier inventor can prove that the first-filing inventor derived the invention from the earlier inventor’s public disclosure.

If this cannot be proven, there are a couple other avenues. First, we must consider what kind of patent application that the first-filing inventor may have filed. A provisional patent is NEVER disclosed by the USPTO to the public. They are kept confidential. Provisional applications also don’t undergo patent examination. Once the first-filing inventor converts the provisional patent application to a non-provisional utility patent, then patent examination begins. At the 18-month mark of patent examination, the USPTO will (with some exceptions) publish the utility patent application for public inspection.

Now, once the application is available to the public, earlier-inventors may submit evidence to the patent examiner of prior public disclosure (also known as prior-art). This evidence would be considered by the patent examiner and may be used to prevent the first-filing inventor from obtaining any patent rights. This however, does not entitle the earlier-inventor to any rights themselves.

The best thing for the earlier inventor to do in this scenario to preserve their own rights with (for example, a provisional patent application) within 12 months of the public disclosure. Then, when the first-filing inventor’s patent application publishes, the earlier inventor may attempt to oppose the first-filers application by proving that the first-filer derived the invention from the earlier inventor’s public disclosure. Having successful opposed the first-filers application, the earlier inventor’s patent application now takes the spot for patent priority!

This process is complicated and this is why it is important to have at least a provisional patent application on file before any public disclosures are made!

If you are interested in more detail related to your situation it is best to speak with an attorney.