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 The Inventor's Mentor

January 2012

Falling Grace and Losing all Rights to your Invention

The new patent law will become effective as of March 2013 and will for all practical purposes eliminate the grace period currently granted to inventors by the current law. What is the grace period? It is a one year time interval following a public disclosure of your invention, whether the disclosure is in the form of a sales or publication. The grace period has its root in the current first to conceive system. It allows an inventor to publicly disclose his invention and postpone filing a patent for up to a year.


Benefits of the grace period. If two inventors claim the same invention, the law sides with the inventor who can prove by means of non-falsifiable (for example, notarized) documents, that he is the first to have conceived of the invention and that he has been working on it diligently.


Pitfalls of the grace period. Let’s say that for the purpose of testing the profitability of your invention you have manufactured 50 prototypes and distributed them as samples to the purchasing department of large retail stores in the hope of getting a large contract. You have also placed advertisements on the Web to see how many interest in the product. Since you need to have a clear confirmation that your invention is profitable, you have postponed filing a patent.

If you let one year go by from the first date of publication or sale, your invention goes into the public domain. According to US patent law an invention cannot be patented if:


“the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States” (35USC102(b)).


A provisional application can follow the grace period. What if one year is not sufficient for you to ascertain the value of your invention or even work out all the technical glitches? You can always file a provisional application before the expiration of the grace period. Two great advantages of provisional applications are that they are less expensive than non-provisionals and any number of them can be rolled into a single non-provisional application or an international (PCT) application as long as the non-provisional or PCT is filed within one year of the first provisional.


Making a business decision. To avoid the 35USC102(b) pitfall you need to understand the implication of the law at the beginning of the inventive process: before marketing, selling and publishing your invention you’ll have to make a business decision. If you think that your invention merits international filing, and if you have the funds to do so (it could cost you ten’s of thousands of dollars depending on how many countries you file in) then you cannot make your invention public until you file. However, you can always delay the decision by filing a provisional which can, within one year, be converted to a PCT application.

On the other hand, if you think that a US patent is sufficient, then you have one year to experiment publicly with sales. The US is a huge market and usually, filing in the US alone can offer the best cost/benefit ratio. Remember, you do not need to build a prototype to file for patent. All you need is a well written description of your invention, with enough detail to enable someone having ordinary skill in the art to build it. Your description should also include which, in your opinion, is the best mode or best version of your invention.


The new diluted grace period. The new first-to-file law will bring the United States essentially in line with all other countries. The old-style grace period will be eliminated.

In most foreign countries, the moment a public disclosure is made, the invention becomes public and no one can patent it. In the US a diluted version of the grace period will remain: if one inventor publishes his invention he still has one year to file. However, if two inventors publish the same invention they essentially lock themselves out, each inventor’s publication counting against the other inventor unless the first inventor can prove that the second derived (i.e., stole) the invention from him – an almost impossible task.


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This newsletter should not be construed as being legal advice.         ©2008 by George Levy