When to file

When should you file? Should you file as soon as possible? Or later, when you have it all figured out and have a working prototype and a solid plan? Furthermore, should you claim priority?

The timing of the filing of your patent application should be an important part of your IP strategy. Preferably, creating a sound IP strategy is one of the first steps you take after starting your consultations with your patent attorney. 

You might already know that you have to file quickly to be the first, since, according to the "first-to-file" system, a patent belongs to the inventor who filed the application first.*

However, you cannot file too quickly, because you need to have a professionally drafted application ready that discloses the subject matter sufficiently** and you cannot add new matter later***. If a poorly drafted application gets published, it can become prior art for your future applications.

Furthermore, it is highly advised to conduct a prior art search before filing, which also takes some time.

You can probably conclude that the timing of the filing makes a big difference, and whatever your decision, it will have its pros and cons. With that being said, there are some rules that you can follow. Let's see.

Reasons to file as soon as possible:

1. If you file first, the exclusive right can belong to you

   The "First-to-file" rule is applied now in every country. This rule means that the person who first files a patent application for a given invention will own the patent right over that invention.

   TIP: US used to have a different system, called "First-to invent", which meant that the date of the filing is not relevant, and the inventor who actually invented the invention first will be entitled to a patent; even if someone else files a patent application. However, you can imagine how difficult and time-consuming this investigation is.

2. To avoid intervening prior art

   The later you file the application, the more prior art documents will become available, which all can be cited against your invention in the examination process.

3. Prevent your competitors from obtaining a patent

   This is, again, related to the "first-to-file" rule, but what I would like to emphasize here is that no matter how cautious you are, the longer time you spend working on your invention before filing a patent application and the more meetings you have, the riskier it can become. The less people know about your invention, the better. Sooner or later a competitor can find out what you are working on and will try to beat you to it.

4. To be able to start commercializing your product and earning money from your invention

   The sooner you file, the sooner you can publish your invention and sell license rights. Once you have a patent pending status, you can start marketing, business negotiations, attending conferences, starting crowdfunding campaigns and actually building your business and earning money.

   TIP: Do not disclose any new features publicly that were not contained in your first application.

Potential disadvantages of early filing:

1. Your prematurely filed and hastily drafted applications can destroy the patentability of your improved invention

   Do not rush the filing. Make sure that your claims and specification are well drafted. The early-filed patent applications, once published, become prior art for your later-filed improvements. These prematurely filed patent applications can be cited against your invention with respect to novelty and inventive step.

2. Budgeting problems

   With the filing of your patent application, you enter a legal process governed by strict timescales and regular official fees. You need to pay substantial costs in order to keep the application alive, even before knowing whether your idea is commercially viable.

3. Your prematurely filed and hastily drafted applications may not satisfy requirements

   As mentioned before, there are certain requirements that a patent application must satisfy. If the application is badly drafted or is missing essential features, embodiments –because there was not enough time for drafting– it will never be granted, but will be made available to the public.

   One important requirement is that the application has to disclose the invention sufficiently clear and complete for it to be carried out by a person skilled in the art.** If there is a problem in this regard, it is almost impossible to overcome it, since you would have to add examples and explanation to the application, but adding new matter to the text after the filing date is forbidden.***

   TIP: If you know that there are some problems with your application, make sure to withdraw it before publication so that its content does not become public.

4. The priority year starts with the first filing

   The filing date of your first filing is an important day, as the priority year starts running from this date. You cannot extend the period of 12 months, and it is very important to use this year wisely. However, if you file when you are not yet ready, you will lose valuable time from the priority year, and will have to act in haste with your subsequent filings as well. Make sure to have a profound IP strategy before filing.

   Read more about priority here: “Everything about priority”.

General rules

1. Do not need to wait until you have a complete product

   It is not necessary to wait for a working or commercial embodiment, you can and should file the patent application earlier. In Europe, you are not obliged to disclose the best version of your invention, and you are not required to have a working prototype.

2. First file, and then publish

   This is a very important rule, which can save you from the worst-case scenario. Please remember that there is no grace period in Europe! If you publish your idea, it will become prior art that can be used against your own patent application during examination. You will not get the patent because your own early publication took away the novelty of your invention.

   TIP: Grace period only applies in some countries, like US and Canada. However, it is not advised to rely on grace period too much. After your invention becomes public, competitors will try to think of ways to improve your invention, and might even try patenting the improved alternatives.

3. Do not be pressured to patent

   You might be told to apply for a patent by business advisers or potential licensee companies, but the timing might not be the best for you yet. Always consider whose interests are best served by this advice.

4. Rather file sooner than later

   In conclusion, while there are certain steps you should not miss before filing –the most important having a well drafted application and claims–, it is better to file earlier than later.

To summarize, the best practice is to not publicly disclose any innovations until there is adequate time to think through not just the innovations, but also the likely improvements to the invention, and to be the first to file the patent application.

Finally, make sure to follow the advice published in article “What to do before filing?”, and take actions accordingly. Study the process, study the costs, talk to your patent attorney, plan the timeline together, etc. It is OK to file early or to file late as long as you know the consequences and it suits your plan.

* This is defined in Art.60(2) EPC:
"If two or more persons have made an invention independently of each other, the right to a European patent therefor shall belong to the person whose European patent application has the earliest date of filing, provided that this first application has been published."
See the full legal text here.

** 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.

Author: Zsofia Pintz
Published: August 2020
Updated: July 2023