Business clients developing new technology frequently focus on product development, market strategy, and funding. They may overlook patent considerations until these considerations become problems. As their counsel, you can protect your clients from losing valuable patent rights by recognizing three areas where missteps occur: timing, public disclosure, and inventorship.
The First-to-File System Requires Prompt Action
Under the America Invents Act, the USPTO operates under a first-to-file system. The first applicant to file a patent application on an invention generally receives the patent, regardless of who conceived the invention first. Delay in filing can result in loss of patent rights to a competitor who files first.
The filing date also establishes what constitutes prior art under 35 U.S.C. § 102. Prior art includes patents, published patent applications, and other publicly available materials such as journal articles, product catalogs, marketing materials, and online videos. Each day of delay expands the universe of prior art that an examiner may cite against the application during examination.
Practical guidance: Advise clients to evaluate patent protection as soon as they conceive an invention. Early filing preserves rights and minimizes prior art exposure.
Public Disclosure Can Forfeit Patent Rights
Under 35 U.S.C. § 102, an inventor’s own public disclosure of an invention more than one year before filing a patent application creates a statutory bar. This means the invention enters the public domain and patent protection becomes unavailable.
Disclosure under a confidentiality obligation, such as a nondisclosure agreement, generally does not constitute public disclosure. However, if the disclosure constitutes an offer for sale, it may trigger the one-year disclosure bar even if made in confidence.
Disclosures to prospective investors or consultants engaged to develop the invention typically do not create prior art when made under confidentiality obligations. However, these disclosures present inventorship risks.
Practical guidance: Advise clients to file before making any public disclosure or offer for sale.
Inventorship Determines Ownership and Control
A patent grants its owner the right to exclude others from making, using, selling, offering to sell, and importing the claimed invention for the term of the patent. Under 35 U.S.C. § 262, each joint inventor owns an undivided interest in the entire patent. Each joint owner may exercise all rights under the patent without permission from or accounting to the other owners.
This default rule creates problems. One joint owner can license the patent to third parties, grant exclusive licenses, or assign their interest without consent from other owners. Most companies address this through assignment agreements that transfer ownership from inventors to the company.
Inventorship depends on contribution to the subject matter recited in the claims. Under 35 U.S.C. § 116, each person who contributes to the conception of any claim must be named as an inventor. This requirement creates risks when clients collaborate with consultants, potential partners, or joint venture participants.
When engineers and problem-solvers from different organizations collaborate, joint inventorship often results. If collaboration occurs before filing, determining which party contributed to the invention becomes difficult. Filing before collaboration establishes that the core invention originated in-house and does not require naming outside collaborators as joint inventors.
Practical guidance: Advise clients to file before engaging third parties to develop or refine their inventions. This approach establishes sole inventorship and avoids co-ownership complications.
Recognizing When Patent Counsel Is Needed
Business attorneys serve as trusted advisors on all legal matters affecting their clients. Understanding these patent principles enables you to identify when timing, disclosure, or inventorship issues may arise. When you spot these issues, connect your client with qualified patent counsel to ensure proper protection of their innovations.
Justin Miller is a solo patent attorney. In 2025 he started his own law firm, Distinct Patent Law, after nearly 15 years of practice. His firm is located in Saint Petersburg Florida. He serves clients in Tampa Bay, and because patent law is federal, can file patent applications for clients all over the United States.