Patent attorneys almost always recommend to their clients that they should first file their patent application. There is not a single right way to get from point A to point Step B in this process but there are definitely risks that inventors and entrepreneurs should consider.
It is not necessarily bad advice when people say that inventors should not start with a patent application and can wait to file, but there are definitely risks associated. The U.S. first to file laws should be interpreted to mean file first before you disclose anything, demonstrate publicly or offer the patent for sale. The risk of waiting to file the patent application is too great and my forever make it impossible to obtain a patent.
An invention can usually be patented if it is new and non-obvious. The way to proceed is first to determine whether an invention is patentable or not. If an invention is not new we really never have to ask whether it is obvious.
When the U.S. switched to the first to file system, it was done so in a way that makes the U.S. different from the rest of the world. The U.S. System mandates the filing of the patent application first rather than risking reliance on a grace period. In the U.S. first to file system, the inventor still has a personal grace period. This is not available to inventors outside the U.S. This grace period says that inventor’s own disclosures or the disclosures of others who have derived from the inventor, are not used as prior art as they occurred within 12 months of the filing date of the patent application. Also, there is virtually no chance that a grace period will exist for a third party, independently created disclosures.
You should file as soon as you have an invention that is has an adequate description through words and drawings. File first and file often. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together. You can always claim priority going back to more than one provisional patent application as long as they were filed within 12 months of the filing of the non-provisional patent application.
Hire an attorney so that you can be guided through all the necessary steps and procedures on filing your patent application.
