Is it too late to file a patent application if you’ve launched your product?
Usually the answer is “sorry, it’s too late”, as borne out in a UK IPO decision issued for British patent GB2432556 – a patent for a football goal frame.
Kick-off
In the case at hand, the patent owner (Net World Sports Ltd) had obtained a UK patent for a goal frame assembly in November 2020. The patent owner tried to enforce their patent against a third party (PMF Products Ltd). After some initial correspondence back and forth, PMF subsequently applied to the UK Intellectual Property Office to revoke the patent.
The problem for the patentee is that they had sold ‘self-assembly’ football goals that pre-dated their patent application. PMF Products knew this, and had evidence of this, and so the patent was revoked for lack of novelty because of the patentee’s prior sales. The patentee didn’t even try to defend the revocation action, presumably because they knew it was a lost cause.
Scoring an own goal
If, like Net World Sports, you show your invention in public before you apply for a patent application, then that is an act of disclosure that usually counts as ‘prior art’. This can make it impossible to argue for novelty or inventive step in a future patent application for the invention that was shown. That includes selling your invention as happened in the above case, or even testing your invention somewhere where it might be seen by someone else.
It is worth bearing in mind that archive websites like the Wayback Machine are used to periodically log web pages. So, even if you later take down posts, there is a reasonable chance that it has been cached somewhere for someone to find at a later date (and, crucially, that person will be able to reliably put a date to the information that has been disclosed).
It might be harder to prove what has actually been disclosed if the product launch is done purely in person, but there is usually a wealth of evidence of what is shown because most launches nowadays involve posts on various social media platforms and websites.
Whilst showing off your invention doesn’t stop you later applying for a patent as such, it does mean that your application or resulting patent is vulnerable to attack based on what you disclosed. You might get away with it if there is no ‘enabling disclosure’ – i.e. at least some details are hidden from view (in a so-called “black box”) – but it can still present a risk if someone can deduce what’s happening.
If you absolutely must disclose your invention before filing, e.g. telling a potential investor why they should invest, then make sure to get a confidentiality agreement (also called a non-disclosure agreement or NDA) signed first.
Extra time
Whilst those are the rules in the UK and Europe, it’s a different ball game in the USA (plus a select few other territories around the world).
If you disclose your invention in public, then for the USA you have a grace period of 12 months in which to file a patent application without having your own disclosure count as prior art (although what others do in the meantime is prior art).
So, if you find yourself in the situation where you have launched your product before applying for a patent, then you might still be able to validly apply for a patent in at least the USA.
Final score
The ball’s in your court when it comes to deciding when to patent and when to launch your product, but we strongly recommend applying for a patent before you tell the world how good your invention is!
If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.