Can I share my patent pending idea?

The top questions after you are patent pending

Now that you have filed a patent application, the question is can you share your idea/invention with others?.

Question 1: Should I share my idea or invention before applying for a patent?

While there is no law against sharing your idea with others before you are patent pending, presuming budgets allow for it, it is never beneficial to share your idea or invention before filing a patent application. If you do so, you may lose foreign patent rights and risk someone filing a patent application for your idea or invention with the Patent Office before you do. 

Should I share my idea or invention before applying for a patent?

What can I share after filing a patent application?

Can I stop someone with patent-pending rights?

Question 2: What can I share after filing a patent application?

Once your patent application (provisional patent or non-provisional patent) has been filed, the question arises whether you can discuss your invention or idea given the new obtained patent pending status. 

The simple answer,, yes you can discuss whatever is discussed in the application. Just be careful not to discuss new or different ideas (such as improvements or new versions) not included in the patent application. If you have new ideas or improvements not included in the patent application you will want to file a new patent application to cover those ideas or improvements (if the are valuable) before discussing them with others.

Question 3: Can I stop someone with patent-pending rights?

As a reminder, the owner of a patent application does not have any actual rights to enforce the patent application against anyone unless/until the patent is granted. Your patent rights only come into play if/when the application is granted. If/when the patent is granted you can reach back up to 6 years in the past (or until the date you filed the patent application - whichever is the shorter amount of time) and enforce the granted patent against infringers.

Question 4: What protection does patent-pending provide?

Patent-pending inventors or owners are protected in that they can discuss their invention without hurting their ability to get a patent. Further, waiting until after you have filed a patent application to discuss your idea or invention minimizes the chances of someone else filing a patent application on your idea under the first-to-file rule. Waiting to discuss your idea until you are patent pending also allows you to apply for international patents, because many foreign countries don't let you file a patent application once you have publicly disclosed your invention to others (i.e. conferences, websites, offering it for sale, etc.).

Question 5: What are some patent-pending fails?

There are a few caveats to patent pending “protection.” 

- As discussed above, the patent application may never issue. If a patent application never issues and becomes abandoned, the abandoned patent application resulting in zero patent rights. 

- If a non-provisional patent application is filed without a non-publication request, the patent application is published after 18 months, exposing potential trade secret information to the public without getting any exclusive rights in return.

- If the inventor or owner files a provisional patent application and fails to convert it to a non-provisional application within a 1-year time-frame, the inventor or owner loses their date of invention (priority date). The date of invention is the date the government defines as the day you invented you invention. 

- If you don't convert your provisional patent application with the 1-year time-frame and disclose your invention to the public over a year before filing a non-provisional patent application, the loss of the invention date will stop an owner or inventor from later getting a patent application. You will also lose any foreign patent application protection.

Conclusion

Once you are patent pending, you can discuss your invention with others. Just be careful not to let a provisional patent application go abandoned. If you are not yet ready to file a patent application, avoid publicly disclosing your concepts and use non-disclosure agreements (NDAs) where ever possible.


Devin Miller
Founder and CEO of Miller IP Law

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