Patent Attorney Mark Trenner answers questions about “Where do I go with my bright idea.”
Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?
Patent Attorney: That’s a good point. The United States patent law used to afford inventors one year from any public disclosure or public use, sale or offer for sale, or publication of their invention, in which to file a patent application without any loss of right.
Interviewer: Right, so why the caution about discussing your invention now?
Patent Attorney: The patent law in the United States changed recently. The new patent law, known as the America Invents Act, took effect in stages, with many of the important provisions taking effect in March 2013. While the law will need to be clarified by the courts, it appears that at least some of these grace periods are no longer available.
Interviewer: What are you advising your clients under the new patent law – the America Invents Act?
Patent Attorney: Well I have always advised my clients not to publicly disclose or use, publish, or sell their invention prior to filing a patent application. While inventors may initially think only about US patents, there are times when filing outside of the US makes good business sense.
For Part 3, see New Patent Law Wisconsin Q & A – Part 3 of 4
