Protect Your Patent Between Application and Filing

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The US patent system is among the best in the world and has been for well over 200 years, but recently troubles have been brewing in patent-land, resulting in unintended consequences for inventors in the process of obtaining a patent. Let's take a closer look.

The Patent Process

First, it's necessary to understand how the patent process works. The purpose of a patent is to protect and grant property rights to the creator of an invention or process. The patent is issued for a period of 20 years from the filing date of the application. Property rights for patents are defined by the US Patent and Trademark Office (USPTO) as follows:

"The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention."

Publishing Patent Applications

Since 1999, Congressional law has mandated that the USPTO publish patent applications 18 months after the earliest filing date of the application. In other words, the invention, which during the application process is unprotected, now becomes available for the world to see—and potentially copy. And therein lies the problem.

Patents regularly take up to 32 months to be issued, leaving 14 months during which the details of the patent are publicly available, but the patent owner cannot take action against infringers. So, what was previously a closely guarded secret is now out in the open, but isn't defendable since a patent doesn't yet exist.

Once the patent is issued, it's possible for the patent owner to collect damages for infringement occurring in the time between application publication and issuance. However, a published patent application is usually necessary to do so. The problem of publication is also the solution.

An inventor can request that a patent application not be published prior to issuance, but there are risks in that as well. By requesting non-publication, the filer limits her ability to claim the provisional patent rights described above. In addition, non-publication prohibits filing of the patent outside the US. And publication or not, there's no way to ensure that someone won't come up with the same idea and put it into use while your application is being processed.

Protect Your Idea

So what can you do to protect your original invention? First, apply for a patent. Patenting your process or invention establishes and protects your ownership rights.

If you discover that your pending patent is being infringed upon, you should supply a copy of the published patent application to the infringer, along with details identifying the infringing product and the specific patent claims it is infringing upon. This will help prove that the infringer had notice of the published patent application, which is necessary to establish that your provisional patent rights were infringed upon.

Once your patent is approved, you can pursue claims against infringement that occurred between publication and filing, as well as defend your rights against further infringement.