What is the meaning of public disclosure of an invention?

Patents are time-sensitive. Those desiring patent protection do not have the luxury of waiting indefinitely to file a patent application, especially if they have already released certain information to the public. By definition, public disclosure refers to a non-confidential conveying of information pertaining to your invention. Unlike trademarks which do not pose any mandatory filing deadlines based on prior use, patents have strict filing deadlines.

Public disclosures of inventions can take on various forms. Disclosures include documents as well as activities. The public nature of disclosures refers to the manner in which the information is conveyed. Some common examples of public disclosure include trade shows, websites, product launches, product sales, printed publications, advertising and marketing materials, verbal discussions with people outside your company, business meetings conducted without NDAs, grant proposals, contest submissions and more. Even an email may be considered a public disclosure depending upon the content and the recipient.

Can you lose patent rights by showing your invention or selling your product?

Public disclosures of inventions can lead to the forfeiture of patent rights if the inventors or owners do not act in time. Most countries outside the US have strict laws that prohibit applicants from patenting inventions that were publicly disclosed before the earliest patent filing date (priority date). Patent laws in the US are a bit more gracious than the patent rules of most foreign countries. In the US, inventors have a 1-year grace period to file US patent applications. The 1-year grace period is counted from the earliest date of the inventor’s own public disclosure or sale.

What are not public disclosures?

To avoid the loss of patent rights, you can take certain steps to keep the disclosures of your concepts confidential:

  • use a non-disclosure agreement (NDA) / confidentiality agreement when presenting your invention to investors, vendors, customers or anyone other than your patent attorney/agent;
  • if an NDA is not possible, keep the disclosure general and brief without mentioning specific details
  • limit the content of your disclosures to only publicly available information without revealing key patentable features
  • discuss the problems to be solved without revealing specific solutions or secrets for making a solution feasible

Would my own published patent application count as public disclosure?

The publication of a patent application anywhere in the world would constitute a public disclosure. Most utility patent applications around the world are published generally around 18 months from the priority date, with a few exceptions such as US provisionals and US nonprovisionals with nonpublication requests. For applicants who have already had their pending non-US applications published but failed to file a timely application in the US with a priority claim, there might be time left within the 1-year grace period to file a standalone US application without a priority claim.

Applicants with US published applications may also want to file a CIP within one year of the publication date to avoid the published patent application from being used as prior art.

Patent strategies to accommodate public disclosures

Public disclosures might be inevitable especially for startups seeking funding from investors or groups who do not sign confidentiality agreements. Plan ahead by filing the appropriate patent applications that fit your budget before publicly disclosing your concept. When budgeting for IP protection, cash is not your only resource. Think of time as a resource – reserve your IP rights by filing whatever patents are affordable now so that you can pursue more expensive (and more valuable) patents later.

Avoid disclosing features not included in your pending patent application

If you anticipate disclosing a concept covered in a patent application you already filed, make sure to disclose only those features discussed in your pending application. In other words, avoid discussing any new features that are not included in your prior-filed application. Consider filing an additional provisional or CIP to cover the new subject matter before disclosing it.

How can you protect your IP if you have already shown your idea or sold product?

At the outset, pin down the earliest date that you publicly disclosed your concept and calendar the one-year anniversary. If you are within one year from the earliest date of public disclosure, file the appropriate patent application(s) as soon as possible. We strongly recommend not procrastinating until the end of the 1-year anniversary as you will risk others beating you to the Patent Office.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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