The decision as to when to complete your patent filing can have a significant effect on the success of your application and enforceability of the patent that will issue from it. In fact, the implementation of the "first-to-file" patent system under the America Invents Act (AIA) significantly altered the application process by stipulating that an applicant who files first, regardless of the date of invention, is entitled to the patent rights and protections afforded by the USPTO.
The first-to-file patent system supplanted the U.S. first-to-invent patent system for applications filed on or after March 16, 2013. The most obvious benefit of this system is that the applicant can prevent others from obtaining a patent for a particular invention by quickly putting their application on file with the USPTO. A prompt filing effectively means that your application would preempt a potential competitor's filing and avoid any ambiguity as to which party is entitled to the patent for an invention. As a result, inventors and potential investors can proceed confidently with the knowledge that the rights to the patented invention are definite and secure. Those who wait to file are faced with uncertainty as to the status of their patent rights. In addition, any public disclosures by others made prior to the application filing date can be deemed prior art and may be used to oppose an applicant's patent claims.
While a prompt and early filing is clearly advantageous for these reasons, there are a number of factors that an applicant must evaluate before filing their application. Applicants may erroneously focus solely on filing their applications quickly to secure their rights without adequately assessing the strength and thoroughness of the disclosure of the invention that is provided in the application. If the application process is not managed and executed correctly, then the applicant's rights can be significantly impaired in the future. In the race to file, what should potential applicants consider before initiating the filing process?
Inadequate disclosures. An inventor should adequately develop an idea and/or document the implementation of an invention before applying for a patent. In general, an applicant should strive to submit narrowly tailored, distinct claims that emanate from practical applications of the invention to ensure the best possibility for success, in addition to broader claims that may provide blocking value against competitors or easy design arounds. An idea that is only partially or insufficiently developed may be deemed overbroad and fail to qualify for patent rights. Moreover, elaborations that are submitted at a later date run the risk of exclusion from the initial application that bears the priority date.
Incomplete descriptions of the invention. The actual application must include a complete description of the invention, optionally with an accompanying illustration and/or working examples if applicable, and enough information for someone else to make and use the invention without "undue experimentation." The absence of these elements may result in a lack of adequate support for future claims related to the idea or invention. Because the priority date applies only to the invention described in the application, an applicant should ideally wait until the initial key stages of development, such as testing and research, are at a stage at which data may be included in the patent application. Filing before there is adequate technical information may be detrimental to the prospect of securing protection for the invention, and in a broader context, may incur cost and devote resources to applications for inventions for which there are no commercially viable uses.
Subsequent filings. An inventor who has failed to adequately develop the invention or has not described the idea thoroughly in the patent application typically must file subsequent applications, but the actual priority date may be deemed to be the date on which full information about the invention is provided. As more information becomes available, the applicant may need to file new applications to describe variations or improvements to the original invention or to explain newly discovered applications of use for the idea.
Ultimately, a well-developed, researched invention accompanied by a thorough patent application is a good candidate for early and prompt filing. A provisional patent application provides the filer a 12 month period before they are required to submit a formal patent application. After filing, the provisional application provides confidence that a public disclosure may be made, while the underlying invention is protected. Further, the filing of a provisional application establishes the patent priority date, thereby allowing the applicant to access the benefits of the first to file system. Most importantly, the time lapse provides applicants with the opportunity to perfect the idea and assess the viability of the invention in the public sector before incurring the expense of a nonprovisional application one year later.