Last minute filing
In the article “When to file?” we discussed that rushing the filing of a patent application is not a good idea for various reasons. Still, unfortunately, many inventors start planning the patent filing too late. So, you can imagine that patent attorneys asked a lot about last-minute options. (For example, the conference starts in a week, so we have to prepare and file a patent application by then...)
Filing a patent application at the last minute is usually still more beneficial than publishing the innovation without any protection. Of course, this depends on your IP strategy, some will publish intentionally and never file a patent application. This is called defensive publication, which is an intellectual property strategy used to prevent another party from obtaining a patent.
Nowadays, when online filing is possible with almost all of the patent offices, not the act of the filing is the problematic part when it comes to last-minute filing, but drafting the claims and specification. Drafting is a difficult task and it takes time. It is important to file a professionally drafted application and to include every information you wanted, since adding new matter later is forbidden.
“Patenting involves a complex mix of law and technology. The claims in particular need to be drafted with skill, as they are the most important aspect of a patent.”
Filing a hastily drafted application can have its drawbacks, as it might include some errors that cannot be corrected later in the process. The summary “When to file?” describes reasons to file as early as possible and some potential consequences of early filing.
However, patent attorneys absolutely understand that sometimes last-minute filing is inevitable. That is the reason why we put so much focus on fully informing you about the possible consequences so that you can be prepared. If you can, contact a patent attorney as soon as you realise you might need a patent at one point. It is better to start planning your IP strategy and planning the timing of your filing at the beginning of the process.
The possible disadvantages of last-minute filing:
The application does not satisfy the requirements and will not be granted.
In this case, every effort goes to waste. A rejection might happen if, for example, your application does not describe the invention sufficiently, i.e. does not disclose how the invention is carried out.* Overcoming a problem like this is almost impossible, since it would need the addition of new subject matter. However, adding new subject matter to the application after the date of filing is not allowed.**
A rejection might happen for several reasons. Another example is if your invention is not inventive, e.g. because you failed to mention any features that would make your invention not obvious.
Even worse, if the application is published (but not granted) and destroys the patentability of your later filed, improved invention.
This result puts you in a terrible situation: your patent is not granted, but the application is made available to the public – including your competitors. If the application becomes prior art, it can be cited by the patent office when assessing novelty and inventive step. Thus, your own filing can take away the novelty of your future inventions.
The filing date changes if you missed filing parts of the description or drawings.
Your filing date will change to a later date if you have not filed some document parts. As a result, you will lose your filing date that you fought for. Make sure to have all the documents ready (request with the information of the applicant, description, claims, drawings), since, according to the EPC***, the late filing of parts of the description or drawings can cause the application to be re-dated to the date on which these missing parts are filed.
What can you do if you really need to file last-minute?
Study the article: “What to do before filing?”, and try to follow the steps. Instead of a full professional prior art search, spend 1-2 hours studying the prior art and your competitors' patents.
Most importantly:
Have a consultation with your patent attorney,
and let him/her know the deadline (e.g. the date when your invention is going to be made available to the public) when the filing should take place so that he/she can be ready and is informed about the potential overtime.
Work closely with your attorney and reply to his/her emails promptly.
Your attorney will need a lot of information from you, both the details your invention and information about the inventor, applicant, etc.)
Prepare your invention disclosure form as thoroughly and as quickly as possible.
For help, read article "What is an information disclosure document?" how to do it.
Do not swamp your attorney with hundreds of pages, but do not send him a few sentences either. It is not your patent attorney's job to invent and to figure out how your invention actually works. Do not fail to mention how the invention exactly works and what kind of alternative features it might have.
Prepare black and white drawings,
if needed to demonstrate your invention.
The filing and search fee can be paid within one month, so you do not need to worry about that on the day of filing. Furthermore, there are some documents that you can file later (e.g. the abstract might be filed within two months after the EPO's notification (Rule 58 EPC), and designation of inventor form) but do not delay filing parts of the application itself.
* This is defined in Art.83 EPC:
"The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art."
See the full legal text here.
** This is defined in Art.123(2) EPC:
"The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed."
See the full legal text here.
*** This is defined in Rule 56 EPC:
”If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing … the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed.”
See the full legal text here.
Author: Zsofia Pintz
Published: August 2020
Updated: July 2023
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