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.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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