For start-ups that are building their business around an innovative product, preventing more established companies from copying their idea by having a patent granted is essential. However, there are plenty of other essential aspects of a business which need attention when just starting out.
Therefore, is it possible for a start-up to defer filing a patent application, to allow funds to be spent on other areas of the business?
Why would I not be able to wait?
One of the chief requirements of obtaining a patent is “novelty”. Therefore, your idea must be completely new compared to what is already publicly available at the time of filing the patent application.
In general (read on to find a notable exception), patent offices do not distinguish between who made the idea available. Therefore, if you wait to file a patent application and start selling or marketing your product beforehand, then you may be prevented from obtaining a patent.
Even if you are not intending to publish or market your product just yet, someone else may have come up with a similar idea. Waiting to file your patent application increases the chance of someone else disclosing or filing for a similar idea – preventing you from obtaining a patent to that idea.
To destroy the novelty of your invention, you would need to publish enough information to allow someone to recreate your invention.
In the case of a physical product, selling the product would likely destroy your chances of protecting the product itself. However, the method used to make the product may be the clever idea you want to protect. If this method is not discernible from looking at the product, and if you have kept the method confidential, then you may still be able to protect this, even after launching. Additionally, if you only publish pictures of the exterior of your product (for example for crowdfunding campaigns), and these do not reveal how the product works, then you may still be able to obtain a patent to the workings of the invention.
In the case of an app, if the clever way the app works is locked away behind the scenes and is not apparent from the software which is distributed, then it may still be possible to protect this aspect of the app, even after launching.
In the above examples, it would be crucial that the method of production and working of the app be kept confidential. Non-disclosure agreements should always be used if such information must be disseminated to potential business partners or developers.
The notable exception
The United States (among a small number of other countries) provides a 12-month grace period for inventor disclosures. Therefore, if you publish your invention, this publication and any third-party publications going to the same published material won’t work against your US patent application. This is as long as you file for a patent within 12 months of your first publication.
However, other key markets (such as the UK, Europe and China) do not have such grace periods, so this strategy would result in a loss of ability to obtain protection in these markets.
Whilst the UK and Europe do not have a grace period for patents, they do have a 12-month grace period for registered designs. Therefore, if you are only interested in protecting the way your product looks in these territories, you can market your product first, and file for a registered design within 12 months.
However, this strategy is not without risks as your registered design can be knocked out if a third party independently derives and publishes the same or a similar design before you file your registered design.
Additionally, China, among some other countries, do not have such design grace periods.
As a general rule of thumb, do not wait to protect your intellectual property (IP), whether that is by way of a patent, trademark and/or design. The IP in your business can be one of the most valuable assets within a few years. Stake your claim to it before someone else does.
Furthermore, selling or marketing your invention before filing a patent application would usually prevent you from obtaining a patent downstream. However, if the concept of your invention is not discernible from the product you sell or market, it may still be possible to protect it even after launch. But this is risky. Determining whether and where protection can be obtained in these instances can be complex. If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact us on 01242 691 801.