Competing factors often come into play when deciding when to file a patent.
First, the invention must be ready for patenting. Don’t file a patent on a research plan. You need a complete and operative invention.
On the other hand, business necessities can create urgent deadlines. To protect your rights, you should file a provisional patent application before disclosing your invention to potential partners or investors, filing an IND,
publishing a paper that can be cited as prior art, or selling a product or service. Relying on a confidentiality agreement is problematic because NDAs are difficult to enforce.
You should file early if your invention is in a competitive field. When similar inventions are described in two patent applications from competing companies, the first application filed gets priority and becomes prior art to the second.
The problem with filing early is that you may not have finished collecting the data you plan to include in your application. If you know what the invention is, you can describe and claim it in a provisional and add supporting data to the PCT. The 1-year expiration date of the provisional sets a hard deadline for adding data to the application, but post-filing data can be used to establish the plausibility of an invention described in the application. You can also include prophetic data in the application describing the protocol and expected results of planned experiments.
On the other hand, there are benefits from finishing development of an invention before filing a patent. The application itself will be better organized if it’s based on data rather than shifting expectations. You will also have a better grasp of what should be claimed as the final product and what variations to include in broader claims to block your competitors. A modest amount of data on alternative embodiments can increase the likelihood of getting your broadest claims allowed.
If there’s no competition, you should consider waiting before filing a patent application. For example, competition might be thwarted by an earlier patent that covers a critical component of your next invention. Delayed filing will defer costs and extend the expiration date of your patent. Extending the expiration date is particularly valuable for therapeutic inventions because profits are highest immediately before a drug goes off patent.
