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Is It Too Late For a Patent?

One of your engineers comes to you with an energy breakthrough – cold fusion in a jar.* Your eyes turn to cartoon dollar signs when you think about what getting a patent on that would mean. Then your engineer tells you the team has had it running in the shop for a couple of years and has explained how it works to every customer, visitor and youth group that has come through.

Can you still get a patent on it? Under this hypothetical, most likely not as the invention has been publicly disclosed for too long. In the U.S. and a few other countries, inventors have a grace period from their earliest public disclosure of the invention to file a patent application on the invention; the grace period in the U.S. is one year. Most other countries have an absolute novelty system in which a patent application must be filed prior to a public disclosure.

As you might expect, there are highly fact-specific provisions and exceptions related to the nature of the public disclosure; the party making the public disclosure and the country in which the disclosure was made can change the answer. It is best to consult with a patent attorney to determine how the laws apply to your circumstances when making tactical and strategic decisions with respect to where and when to file patent applications.

Returning to the original hypothetical, patent protection on this invention is not available in the U.S. because disclosure was outside the one-year grace period. Is there any other way to obtain patent protection of the invention? There could be; it is rare that an invention is created in a vacuum. Almost every invention is an improvement on something else.

As a result, your best option could be to focus on any undisclosed improvements to the invention. Perhaps substituting a different component in the jar will increase energy output. Maybe your engineer has designed a refueling mechanism or an energy delivery system to get something out of the jar other than light. One can generally obtain a patent on an improvement to a product or system. If that improvement is key to increasing performance or efficiency and therefore value, then obtaining a patent on just the improvement can be as valuable as a patent on the underlying technology. One would not need a patent on an automobile if one owned the patent on the steering wheel.

In the hypothetical, anyone could build a jar that glows, because it was publicly disclosed. Only you can build a jar that uses your patented improvements to produce more clean energy than it uses.

The realization that a public disclosure of an invention has been made should not close a patentability discussion. Any undisclosed improvement, modification or tweak could be what makes the invention truly valuable and therefore should be the subject of protection.

At FTI, we constantly look for improvements to tools, products, systems and processes that will increase their efficiency and safety. Each of those improvements is evaluated for patentability and value. Some are protected using the appropriate intellectual property tool and others are disseminated for use across the company. A complete assessment of an innovation is not solely legal; it should include business, technical and safety considerations. Particular attention should be paid to the improvements that make an innovation valuable. Be sure to consult with your legal counsel for direction.


*Not a real thing. Yet.