You should file a patent application as soon as possible, and before disclosing your invention to the public. If you don’t file a patent application before disclosing your invention to the public, you must file a patent application within 12 months after disclosing your invention to the public.

As soon as possible

Rule number one, file as soon as possible to secure the earliest filing date with the US Patent Office. As the United States is on a patent system know as “first to file”, whoever files a patent application first is first in line to potentially get a patent. If you delay, someone may file for a patent application before you do.

Before disclosing your invention to the public

Next, definitely file a patent application before you show your invention to the public. If someone sees your invention and files a patent application before you do, they could potentially get a patent for your invention. So before you show off your invention to all your friends or put it on YouTube, file a patent application first, even if it is a lower cost provisional patent application.

Within 12 months after disclosing your invention to the public

However, if you disclosed your invention to the public and have not filed a patent application yet, you must file a patent application within 12 months of that public disclosure. If you don’t, you risk not being able to get a patent for your own invention. Strange, but that’s the law! Let me give you an example. Let’s say you invent a great product and put it on KickStarter to try and raise funds but you don’t apply for a patent application yet. The day you put it on KickStarter, you have made your invention public. From that day, a 12 month window of time starts ticking. Within 12 months, you need to file a patent application if you want to try and get a patent. If you file a patent application after the 12 months, your own public disclosure can be used as prior art against your own patent application. In our example, if you filed your patent application after 12 months of your KickStarter, the US Patent Office can use a screenshot of your own KickStarter to reject your own patent application!

So, you need to file a patent application within 12 months of you making your invention public anywhere. However, the patent application doesn’t necessarily have to be a full non-provisional patent application which asks the US Patent Office for 20 years of patent rights. You could file a provisional patent application within the 12 months of your public disclosure and meet the requirement. However, you must convert that provisional patent application into a non-provisional patent application before the provisional patent application expires, so that your non-provisional patent application inherits the filing date of the provisional patent application. This is because in order to keep the date of a provisional patent application, it must be converted into a non-provisional patent application before the provisional patent application expires. If you file a provisional patent application within 12 months of public disclosure but let it expire without converting it into a non-provisional patent application, you lose the date of the provisional patent application which was within the 12 month window. Then, any patent application you file in the future will be outside of the 12 month window and could be rejected by the US Patent Office. If this concept isn’t clear, be sure to read our posts on provisional patent application.

In summary, the simplest rule to go by is, before you show off your invention, file a patent application first. But, in the event you showed off your invention to the public before filing a patent application, file a patent application immediately, no later than 12 months from the day you showed off your invention to the public.