In most territories in the world, if you go public with your invention without having either filed a patent application for it, or got an NDA (Non-Disclosure Agreement) signed by who you disclose your invention to, you immediately have lost the ability to patent your invention.
This is because one of the two main things you need in order to get a patent is NOVELTY, (ie ‘being new’). When you go public with your invention, (which can be as simple/local as ‘telling someone’ about your invention, or as global as publicly releasing a Youtube video or website that discloses your invention), you’ve put your invention concept into the public domain, to some extent at least. (Another way of putting it is that you haven’t kept it ‘private’). By doing that, in patenting terms, your invention is no longer considered ‘NEW’. In other words, you have LOST ‘novelty’. And as stated, because NOVELTY is a REQUIREMENT in order for you to be able to get a patent, you have LOST the ability to patent your invention.
It seems harsh. And perhaps it is. But those are the rules. You have to know them and play by them. But there is an exception…
The American Patenting System Exception (12 Months Grace Period)
Until relatively recently, America, (unlike almost everywhere else in the world), had a ‘first-to-invent’ system. What this meant was that, in very basic terms, boiled down, if you could prove you were the first to have invented an invention, all-other-things-being-good, you had first rights to be able to patent it.
Almost every single other territory, (eg the UK/European patenting system), had a ‘first-to-file’ system. What this means is that, as long as an invention is still ‘novel’, the first person to FILE a patent application for an invention has the first rights to patent the invention. In other words, being able to prove that you invented it first, (eg providing records of product development etc done in private at a time before another party/inventor FILED for the invention), meant NOTHING- it was all about who FILED to patent the invention first.
But in 2013, America moved to a ‘first-to-file’ system. This might make it SEEM like America was going to be running a first-to-file system just like the UK/European patenting system. But there was one key difference in the American system, (one that makes it a lot less ‘brutal’ than the ‘first-to-file’ systems of the UK/Europe and other territories), and that difference was the ’12 months grace period’.
How The 12 Months Grace Period Works
The first thing to bear in mind is that, generally speaking, the 12 months grace period rule is VERY inventor-friendly. What the rule means is that, put simply, (unlike the UK/European system, for example), you can GO PUBLIC with your invention without having first filed a patent application for it, and can disclose your invention without ANY confidentiality in place, and, as long as you file a patent application WITHIN 12 MONTHS of the date you went public, you will STILL be able to patent your invention. (It also means that any public disclosure of your invention that originates from you, (eg the publication of a patent application you filed for your invention), cannot be used as prior art against a later application you file, as long as that later application was filed no more than 12 months after that public disclosure).
The rules are actually fairly broad on this, and if you want to know the actual wording, here’s a quote from MPEP2153.01 from the USPTO website:
AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor’s own work as prior art, when the inventor’s own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor not more than one year before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. MPEP § 2153.01(a) discusses issues pertaining to inventor-originated disclosures within the grace period. MPEP § 2152.01 discusses the “effective filing date” of a claimed invention.
UNITED STATES PATENT AND TRADEMARK OFFICE
This is therefore completely at odds with the UK/European patenting system, where your public disclosure (if you hadn’t filed a patent application for the invention yet) would FATALLY RUIN your ability to patent your invention. And that’s the essence of why it’s called a ‘grace period’. You basically have this extra ‘buffer’ of 12 months where your invention can be publicly disclosed, (as long as the publication ‘originates’ from you), without your disclosure being deemed a ‘novelty-destroying’ disclosure when it comes to trying to get a U.S. patent. Basically, if a USPTO examiner sees a public disclosure of your invention that originates from you, but it was not more than 12 months before the effective filing date of your patent claim that they’re searching, your public disclosure will NOT be seen as prior art that can be cited against your claim, and will effectively be ‘overlooked’.
The 12 months grace period is relevant to U.S. patenting, wherever you’re based in the world. So if a UK inventor, for example, doesn’t know the rules of patenting, and (stupidly!) goes public with their invention without having firstly filed a patent application for it, they will have LOST their ability to patent their invention in the UK (and Europe, etc), but will STILL be able to patent that invention in the U.S. as long as they file a patent application for it within 12 months of the date they went public with it. So in these types of situations, the 12 months grace period can SAVE an inventor, by still allowing them to get U.S. patent protection when protection in perhaps all other territories they would want a patent in would not be possible due to their own ‘novelty-destroying’ public disclosure. (You can see now why I called it ‘inventor-friendly’ earlier…).
Not So Brutal
In short, whilst the UK/Europe run what could be called, (in layman’s terms), a ‘brutal’ first-to-file system, America runs what could be called a ‘hybrid’ first-to-file system, where you get the benefit of this extra 12 months ‘buffer zone’, called the 12 months grace period.
Even A Provisional Will Do (But Can Be Dangerous)
It may be worth you knowing that the 12 months grace period does not even require that you file a full NON-provisional patent application within 12 months- even a PROVISIONAL patent application will do, but that must then be followed by a NON-provisional within 12 months of that PROVISIONAL that claims priority back to the PROVISIONAL. On top of this, there are SIGNIFICANT DANGERS with going this route, because, (for example), if the provisional patent application is drafted by someone who makes a mistake (eg over-limiting the disclosure, or missing out key disclosure), it can potentially lead to a situation where claim(s) in the NON-provisional FAIL TO GET THE EARLY FILING DATE OF THE PROVISIONAL due to lack of support. If this happens, then the public disclosure made before filing the provisional, if the public disclosure was more than 12 months before the NON-provisional filing date, once again becomes potentially citable against the NON-provisional patent application claim(s) as a novelty-destroying piece of prior art.
Even so, it’s worth knowing that, in theory, even filing a provisional patent application within 12 months of a public disclosure, (if all goes well), can make the public disclosure redundant against the later U.S. non-provisional patent application that claims priority back to the provisional. So, in an extreme situation, you could actually file a non-provisional patent application 24 MONTHS after a public disclosure, and still have immunity from the public disclosure counting against that non-provisional patent application, (as long as a provisional patent application was filed no more than 12 months after the public disclosure, and as long as the non-provisional was filed no longer than 12 months after the PROVISIONAL, and claimed priority back to the provisional).
Weekends and Holidays Extend The USPTO Deadline (As Usual)
Another small fact worth knowing is that all these 12 months deadlines ‘carry on’ to the next day the USPTO is open for business if the deadline falls on a weekend or on a U.S. federal holiday where the USPTO is closed.
So if a 12 month deadline from a public disclosure made by an inventor falls on a Saturday, then the inventor would have up until the following Monday, (ie up-until-and-including-the-whole-of Monday), to file a patent application, in order to ‘beat’ the 12 months grace period deadline. (And that’s if the USPTO opens on the Monday, of course. If Monday was a federal holiday and the USPTO were closed and only re-opened on the Tuesday, then the inventor, (by virtue of the deadline falling on a Saturday and the USPTO being closed on the Monday and only opening again on the Tuesday), would have up-until-and-including-the-whole-of Tuesday to file a patent application, to ‘beat’ the 12 months grace period deadline).
USPTO Time-Zone
These deadlines all work to the time (ie time-zone) at the USPTO, which is in Alexandria, Virginia. So in the example above where the inventor had up-until-and-including-the-whole-of Tuesday, if the inventor files the patent application on the Tuesday with regard to the time-zone THEY (ie the inventor) are in, but that time is actually WEDNESDAY in Alexandria, Virginia where the USPTO is based, then the deadline has been MISSED.
Summary
I hope this has given you at least a basic understanding of the 12 months grace period rule in American patenting. The key thing to remember is that disclosing your invention without having first filed a patent application for it (and/or without confidentiality in place), is STRATOSPHERICALLY dangerous to patenting in almost every territory in the world other than America. Even in America, it can be fatal in terms of trying to get patent protection, but the difference with American patenting is that you have the 12 months grace period, which acts as a ‘buffer’.
However, we do NOT rely on the 12 months grace period at SHIINE® with The Inventor’s Journey™, for several reasons. And we only go public with your invention, (if necessary), at the end of The Inventor’s Journey™ system, in step 8. For that reason, with SHIINE®, you never have to worry about these considerations.