Patent Applications: When and What to File.
Even if you don’t intend to file a patent very soon, engage patent counsel early regarding research and goals. Come to a preliminary understanding regarding:
- Patent claims of interest.
- Preferred data to support those claims.
- Target dates for data availability and a patent application filing plan. This can speed the filing timeline once the data is in hand.
File ASAP?
- Is the specific field competitive? Then filing ASAP could be key. But, balance early filing with having worthwhile supportive data.
- Getting scooped is a bigger concern when the interest is pursuing broad claims in the competitive field as it is more likely that others are working in an overlapping space.
Provisional Patent Applications
- Filing provisional patent applications are a common way to start patenting an invention.
- A provisional must be converted to a non-provisional application within 1 year of the first filing date.
- One strategy is to file multiple provisional applications within that interim year as your research program develops and then include all that information in the non-provisional application.
Patent Costs = Attorney Time + Filing Fees
- Attorney time is needed for application preparation and, later, for corresponding with patent offices in the US and internationally during patent examination (also called patent prosecution).
- Provisional filing fees (Year 0) are modest and non-provisional filing fees (Year 1) are moderate.
- Typically, a Patent Cooperation Treaty (PCT) application is filed as the non-provisional application. It is then filed in each country of interest (aka “nationalized”) 2.5 years after the first priority date. Nationalization costs are significant and correlate with the number of countries. After nationalization, costs will go up because of prosecution of the application in all countries.
- If you want to speed up grant of a US patent, a non-provisional patent application can be filed directly in the US at Year 1 which then proceeds directly to prosecution rather than waiting for US nationalization from the PCT.
Publication and Disclosure Strategy
- Align with your patent counsel on the publication strategy before filing (obviously) but also during that interim year between provisional and non-provisional filings.
- Be very wary of publication during that interim year, especially if you plan to continue to add new information in later filings. Just because you filed an application with certain data doesn’t necessarily mean you can publish that data without patent risk to the later filings during that interim year.
- Manage needed disclosures to third parties under confidentiality. Have confidential and non-confidential versions of disclosures of your research ready for meetings. Then you can switch to the non-confidential version if the third party rejects signing a confidentiality agreement.
