Early Disclosure - "What Can I Publish Before Patenting?" is one of the more common questions I get from new inventors. Or the related questions:
Can I disclose this to potential manufacturing partners?
So - let's try to deal with all of these. We first need to talk about some of the concepts in patent law that apply to early disclosures to be sure you understand the recommendations.
The Patent Grace Period
First - understand that dealing with a U.S. patent only is different than considering international applications. Let's get that straight first. And to do that we need to talk about "grace periods".
Under U.S. Patent Law an early disclosure by any means will not destroy the novelty of the invention if it is made less than one year prior to the filing of the patent application. In other words, in the U.S., if you publish a paper, or disclose your invention by selling it, or marketing it, a clock starts ticking and you have one year to file a patent. This is a big deal - I understand that 20% of all U.S. patent applications take advantage of the one year grace period.
By contrast - most of the rest of the world operates under what is called absolute novelty. You publish your invention - you cannot patent. There are a few exceptions - Canada now has a one year grace period, and Japan, Russia, Germany, Austria, Hungary, and the Czech Republic offer versions of a 6 month grace period. The rules around the world are in flux though and your best bet is to assume absolute novelty in your planning. Unless of course you are absolutely sure you will be filing the the U.S. only.
A word of caution about the U.S. grace period. When the one year is over - it is over. Twelve months after an early disclosure there is an absolute bar to patentability.
What is Early Disclosure?
The other issue you need to understand is what constitutes early disclosure in a publication or in marketing. Simply saying that you have a new widget under development that is twice is fast as anything on the market is probably not a disclosure if you in no way describe how you are doing that. Disclosure normally means disclosing your invention - not your product benefits. It is often possible to carefully write any marketing material or public papers so that they do not disclose the actual invention. But I would strongly recommend that you ask your patent person to review those papers before releasing them.
The Special Case of Academic Papers
We are all aware that in the academic world the timely publication of research results is an important career objective. Even in some large R&D companies, particularly government R&D, it is important. But I want to emphasize this as strongly as possible - there is simply no excuse for a university professor or grad student to publish a potential invention that the University might later want to patent simply because of an upcoming important conference. If you are taking the time to write a good publication for an academic conference you are in effect writing an excellent invention disclosure. If you were my client I would simply say - get me the first draft of your paper and I will immediately draft a provisional application for filing. It should be a standard practice.
The same applies to any company that makes presentations to conferences - if you are drafting a paper you are creating an invention disclosure. Get the first draft to your patent practitioner and tell them to get a provisional application filed before the conference submittal. Of course you need to ensure it is a good provisional. You might want to review my article on the provisional patent application to understand why it should not be a "skimpy" provisional.
What About Early Disclosure to Potential Business Partners, Vendors,etc?
In a fast moving product development it is often impossible to move forward without involving company outsiders. In fact the growing trend is to outsource prototyping, manufacturing, and testing of new developments. Ideally you should file a patent before doing this but in reality it is often almost impossible. This is where you must insist on a rigid policy of obtaining Non-Disclosure Agreements (NDA's) from any partner. No exceptions. I am sometimes asked - "What if they refuse to sign one?" My simple answer is "You have the wrong partner." In my years of product development experience we never worked with anyone who refused to sign an NDA.
Even when you have NDA's in place - move quickly to file a patent application once you have made the decision to patent and any early disclosures are imminent.
Public Use and Offers for Sale
The public use of your invention or an offer for sale is a bar to patentability after the one year grace period. You might think - how could the patent office even know if I have offered this for sale? That is not the issue - in fact you could probably sneak this by the patent office easily. But your patent can then be easily invalidated during any litigation. In litigation, your opponent has access to powerful discovery tools, including the right to compel testimony under oath and to compel the production of relevant documents. Once it is discovered - game over. Your patent will be held invalid and you will not be able to stop others from infringing it.
In addition the failure to disclose these things is also unethical conduct. And if your friendly patent practitioner helped you to do that he/she could lose their right to practice before the patent office. So don't even think about it.
But the on-sale bar issue is a complex one and I will want to talk about it in a separate article.
Summary Recommendations
2. When you cannot file first - then take precautions:
a. if you have to give a private presentation or speech - do not provide handouts. A private presentation is not considered a public disclosure.
b. if you must publish before filing - limit your description of the actual invention - talk about the benefits, not the invention.
c. if you need to make an offer of sale - present it as a solution to a problem - without describing the actual invention.
d. when dealing with business partners - always work through NDA's - always.
e. if timing is of the essence - make use of a provisional application filing - but make it a complete one.
Questions?
If I left anything out - or if I confused - drop me a line.
Early Disclosure Before Patenting
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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.
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