For inventors, managing public disclosure is crucial to securing and maintaining patent rights. An ill-timed reveal can jeopardize the ability to patent in many countries and impact the commercial potential of an invention. Therefore, it is important to understand what constitute a public disclosure.
What Counts as Public Disclosure?
Public disclosure happens when details of an invention are shared openly with the public. A wide range of actions that make an invention accessible without confidentiality can be considered as a public disclosure, for example, presentations at conferences or trade shows; publications in journals, online, or through media; sales and demonstrations of the invention; or online posts on social media, websites, or forums.
Essentially, any method of sharing the information of an invention that does not ensure confidentiality, such as through a Non-Disclosure Agreement (NDA), could qualify as a public disclosure.
The Timing of Public Disclosure and Its Implications
As explained in this post, in the United States, inventors have a one-year grace period after public disclosure to file a patent application. However, in most countries, immediate loss of patent rights occurs following any public disclosure, meaning international patent protection may be forfeited if the disclosure was made before filing a patent application covering the invention.
The reason is that in the United States, the prior public disclosure made by the inventors will not be used as prior art against the inventors if the subsequent patent application was filed within the one-year grace period (35 USC 102(b)(1)). Most other countries follow the absolute novelty rule. The absolute novelty rule is a strict standard in patent law requiring that an invention must not be publicly disclosed anywhere in the world before the patent application is filed. Under this rule, any form of public disclosure - such as publishing, presenting, or discussing the invention in a non-confidential setting - renders the invention unpatentable because it’s no longer “new.”
Strategies for Managing Public Disclosure
File Before Disclosing: whenever possible, file a provisional or non-provisional patent application before making any public disclosure. This locks in the earliest possible filing date, which is critical for protecting patent rights.
Some inventors might assume that having a pending patent application allows them to freely disclose all aspects of their invention. However, this is a misconception: if there are any new features or details that were not included in the pending application, it’s wise to file an additional application covering these aspects before public disclosure. Remember, a patent application only protects what is specifically disclosed within it; any undisclosed/new features won’t be covered and may compromise your ability to secure additional protection.
Use Confidential Disclosure Agreements (CDA/NDAs): When sharing your invention with potential partners, investors, or collaborators, it’s essential to use Non-Disclosure Agreements (NDAs) or Confidential Disclosure Agreements (CDAs) to maintain confidentiality and protect sensitive information. If such agreements are not feasible, keep the disclosure broad and avoid specific, proprietary details about your invention. Alternatively, limit what you share to information already publicly available, ensuring that any patentable features remain confidential and protected.
Understand Grace Period Risks: Although the U.S. provides a one-year grace period after disclosure, relying on this alone can be problematic for international filings. Filing first ensures broader protection, especially in countries where any prior public disclosure can result in the immediate loss of patent rights.
Working With Your Patent Attorney: Working closely with a patent attorney is vital for developing a sound disclosure strategy. Patent attorneys can offer expert guidance on timing and help navigate complex issues like grace periods, international filing requirements, and the management of confidential disclosures. They can also advise on when to file additional applications for new or evolving aspects of the invention, ensuring all key features are protected. With their help, you can make informed decisions that align with your business goals while safeguarding your intellectual property.