Tuesday, June 6, 2017
Israel is the StartUp Nation and most startups make sure to file at least one patent application on their ideas. Given the many things an innovator has to do during the first years of a startup, when is the right time to file a patent application?
Many people want to catch the earliest date possible. This makes sense since one needs to be the “first to file” to win the patent over others who come up with the same idea.
The problem with rushing to the patent office is that there is a requirement to provide an “enabling disclosure” of how to implement the invention. Very few inventors know how to make their invention when they first have the idea. Often, an inventor has to build a prototype of some kind or generate a design specification in order to finalize the design.
But many startup founders fear that, in the meantime, someone may come up with the same idea and file a patent application first. This may be true, but if they don’t have the enabling disclosure, they can’t get a patent. It is not sufficient to have an idea; you have to know how to implement it.
There is another issue here as well, one most inventors don’t consider. Once a patent application is filed in one country, it starts the clock for a family of patent applications around the world. According to the Paris Convention, once a first patent application has been filed in a first country, “second” applications in other countries can be filed within 12 months from that first filing. These second applications will be based on, and take “priority” from, the first application. Otherwise, without that priority connection, the first application could be cited against the later, second applications.
Many inventors don’t have enough money to file in many countries at the 1 year point. Many of them take advantage of the PCT (Patent Cooperation Treaty) to gain another 18 months before having to file abroad. The PCT was created in the 1970s to help solve the problem of the lack of budget at the 1 year point. It is known as the “international patent application” and provides the same filing date for all countries signed on the treaty. Thus, if you file in the PCT on Jan 1 2017, it is as if you filed in all the countries of the PCT on Jan 1 2017.
Note that both the Paris Convention and the PCT set their deadlines according to the priority date of the first application. Thus, the timeline for actions, as well as the budget, is set by that very first filing.
The expiration date of a patent in a given country is also set by the filing date. It defined as 20 years from the filing date in that country. For some inventions, like those in fast-changing fields, such as software, 20 years is significantly longer than the life expectancy of the product.
But for other products, such as many consumer products, the product will still be sold 20 years later. And for still other products, such as pharmaceuticals, 20 years is too short. A pharmaceutical product takes 10 - 15 years from invention until the product is cleared to be sold to the general public and is still a viable product for many years after that.
Thus, depending on the type of product, I will consider the expiration date vs. when to file the application.
I will also consider WHERE to file the application, in order to optimize the expiration dates. This is because the expiration date of the first application is about 1 year before the expiration date of the second applications (those filed according to the Paris Convention as well as those filed in the PCT). Thus, the second applications expire about 1 year AFTER the priority application expires.
This fact disturbed the US pharmaceutical companies for whom each extra day at the end of the 20 years is worth a fortune. They invented the “provisional” patent application in order to shift the relevant filing date 1 year later. The provisional patent application lives for 1 year, after which the applicant needs to file a “utility” application based on the provisional application. The 20 years is calculated from the utility’s filing date.
Thus, for consumer products, pharmaceuticals and other long-lived products, we advise the applicant to file a US provisional patent application first, to gain the extra year of protection in the US and to align the expiration dates of the entire patent family.
As you can see, the timing of important milestones in the life of a patent family are defined by the filing date. Choosing a timing based on your objectives is an important part of your patent strategy.