Welcome back! I hope you enjoyed my last post on the most common types of patents. This month, the focus is on public disclosure and how it affects your patent rights as an inventor.
A a reminder, my name is Katie Foss and I am the legal counsel here at Edison Nation and I’m contributing this monthly series to help navigate the tricky road of intellectual property and patent law. Please note that I do not practice patent law, and this post is for informational purposes only. I hope you will find this information helpful in having a more formal discussion with your patent counsel.
At Edison Nation, intellectual property is a cornerstone of our business model and we take extensive measures to ensure that your idea, from the moment it is submitted until it is licensed, is kept secure and private, at no additional cost to you.
Public Disclosure is exactly what it sounds like: the making public of a concept or invention. Unintentional public disclosure is one of the greatest threat to inventors. Disclosures to close friends and family members will generally not count as public disclosure, however posting your invention online or showing it at a trade show is a different story. Some inventors use the internet to help promote sales of their invention or to seek investors. While this can be a great way to boost sales or take a small business to the next level, the inventor must be aware that online sharing photos, videos, or even basic descriptions of an invention can create a bar to patent protection.
Public disclosure can easily occur without an inventor even being aware. An excited inventor could speak too loudly in public and a third party could overhear, thus constituting public disclosure. In another example, an inventor might show a prototype to someone at a manufacturing plant in an attempt to determine tooling costs. This too could be a public disclosure.
Why is public disclosure such a big deal?
Public disclosure is important because, in short, the USPTO will not issue a patent for an invention that has prior art. Prior art may be an existing patent or published application, or it may be a photo of an invention that was posted online prior to a patent application being filed. An inventor’s prior patent application or unintentional public disclosure can be prior art against a later application. Many inventors believe that ownership of potential prior art has some bearing on whether or not it is used against them, however the USPTO does not concern itself with this. Prior art is prior art, regardless of the source.
So what can YOU do to protect your invention and avoid public disclosure?
Be mindful of where, and with whom, you are sharing your idea. While U.S. patent law offers a sort of “grace period” to allow an inventor time to file for patent protection after a public disclosure has been made, it is always best to file some form of patent application PRIOR to any public disclosure. A provisional patent application is an inexpensive means of gaining a priority date, which we will discuss at length in next month’s post.
If you are not yet ready to file for patent protection, a simple Non-Disclosure Agreement (NDA) can allow you to share proprietary information with potential licensing partners, suppliers, manufacturers, or other third parties without it constituting public disclosure. There are countless NDAs available online that can be easily found and customized to meet your needs. Any legitimate company will be well versed in executing NDAs and should fully understand your need for confidentiality. A disclosure made under an NDA is not considered a public disclosure.
As always, there is no substitute for patent counsel when it comes to knowing and protecting your IP rights. While this is often a major expense for most inventors, the fact remains that their experience and expertise make them uniquely qualified to provide guidance on these issues.
I hope you have found this information useful, and I look forward to discussing Priority Claims and how they affect your patent rights in next month’s installment. Until then, Happy Inventing!
PLEASE NOTE: This post is for informational purposes only. This post is not intended to provide legal services of any kind to individual inventors. If you seek or require legal services of any kind, please contact a licensed attorney as soon as possible.
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