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In January of this year I shared an image of an invention via a certain social network. I would now like to file a provisional patent to buy me some time while I see if the invention is economically viable. Should I:

  1. Sneakily delete all social media posts so prior art will not be available.
  2. Bite the bullet and file a non-provisional patent application that will not be valid elsewhere (like the EU) because of stricter rules on prior art.

To clarify, I posted 5-6 images over the course of several months. One image, from January, shows the invention actually being used, whereas the rest show the results of the invention in use.

I get that option 1 would not be legally advisable, but considering the limited reach of my social network presence (i.e. image hasn't been shared elsewhere) I'm looking for practical advice on whether or not this would work.

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  • related: patents.stackexchange.com/a/19751/18618
    – A. K.
    Aug 24, 2018 at 17:35
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    Was the social media disclosure open for all to see or limited to certain invited people?
    – Eric S ♦
    Aug 24, 2018 at 18:39
  • @ericshain yes it was open for anyone to see
    – J Doe
    Aug 24, 2018 at 21:48

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You can file a non-provisional or provisional application until one year after the date of your social media disclosure. If you file the provisional you can convert it to a non-provisional within one year or file a new non-provisional within one year of filing. What you should do between these I can't say. You cannot do option 1 since that you would fail to make a disclosure you are obligate to disclose under 37 CFR 1.56. Failing to do this is considered inequitable conduct and could result in rejection or invalidation* of your application by the USPTO per MPEP 2016, or be an affirmative defense to infringement in a lawsuit.

*an invalidated patent is where the patent is otherwise patentable but because of inequitable conduct has been rendered unenforcable.

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  • So if I file a provisional, I would still get a year from the provisional filing date? I thought that time elapsed since the mistaken social media disclosure was subtracted from the one year grace period provided by the provisional application.
    – J Doe
    Aug 24, 2018 at 21:50
  • In regards to the inequitable conduct, I understand that it's not legally advisable to delete evidence of prior art. What I'm wondering is, if I delete the posts then who would be able to find it and bring it up in court?
    – J Doe
    Aug 24, 2018 at 21:54
  • @JDoe, the disclosure does subtract, you can file a provisional and file the non-provisional the next day, there is nothing against that. You cant file any application after 1 year after your initial disclosure. which means you could file the provisional now and file the non-provisional in 4 months but not five. Five months from now you would have to convert your provisional to a non-provisional to have a patent and the term would be 20 years from now.
    – A. K.
    Aug 24, 2018 at 22:03
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    @JDoe probably nobody would be able to find it. But if they did, you'd be in huge trouble if the patent has any worth. And if it doesn't ... well ... How do these things come out? Someone will remember the post or have a copy and be mad at you. It happpens. Less often than not, probably, but you never know. And it can potentially ruin you. In the end, how could anyone advise you on that?
    – user18033
    Aug 25, 2018 at 16:00
  • @JDoe, another point is that a patent agent/attorney isn't going to risk their license to suborn perjury.
    – A. K.
    Aug 25, 2018 at 16:04

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