Public Disclosure: a Global Conundrum

09.09.15

Many inventors instinctively keep their ideas under wraps before meeting with an attorney to discuss patent protection. This is usually in part because inventors do not wish others to ​“steal” their ideas which may include creating the product when the inventor has no protection. There’s another reason not to: public disclosure of an invention can legally bar an inventor from receiving a patent.

What is meant by public disclosure?

As a general rule, a public disclosure is communication of an idea or invention to someone who is not under any obligation to keep the idea or invention secret. There are some limitations to this definition, for example, regarding detail disclosed or whether the material was publicly accessible. However, as a rule of thumb, any non-confidential communication of an invention may be considered a public disclosure.

Why does a public disclosure matter?

In the United States, a public disclosure made by the inventor (or joint inventor) may prevent an inventor from obtaining a patent if it is made one year before the filing of a patent application. The same rule applies if the person who disclosed the information obtained the information from the inventor. This seems like some breathing room, however, protection outside the United States is not so lenient. Many countries have rules about absolute novelty — in other words, if an inventor made a public disclosure of her invention, the inventor may be out of luck for patent protection in that country.

In other words, an inventor wishes to seek patent protection, she may want to keep her lips sealed (or her confidentiality agreements at the ready) before filing a patent application or risk losing rights.

• Patent