What is public disclosure?

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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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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