Early stage companies are understandably excited to demonstrate their concept, whether to friends, potential investors, or their office-mates. In fact, it may be essential to their survival to do so, since they can’t attract investors and users without showing them what they’re doing.
But companies that are considering patent protection for their concepts should be aware of the risks of an early disclosure, or else their dreams of a valuable patent portfolio could be torpedoed even before they start.
The Patent Act is littered with traps for the unwary; an inventor who publicly discloses his or her invention prior to the filing of a patent application runs the risk of losing the ability to obtain a patent in the U.S. and around the world.
The U.S. has long given inventors a one-year grace period to file a patent application following the first public disclosure of the invention. However, a well-intentioned recent set of changes to U.S. patent law have thrown a wrench into what can be disclosed and when. Part of the confusion comes from a change that now generally rewards the first to file an application, as opposed to the old first-to-invent system.
Under the revised law, absent an applicable grace period, a person cannot obtain a patent if, before the filing date of their application, they described it in a printed publication, put it into public use, place it on sale, or otherwise made it available to the public. 35 U.S.C. § 102(a)(1).
There are a number of reasons behind the policy, but they reduce to fairness to the general public. An inventor should not be able to put the invention into the public sphere, only to later pull it back, possibly trapping those who thought the invention was for all to use, and unduly extending the term of the patent. The Patent Act has discouraged this behavior for generations.
Enter the grace period, known to many as 35 U.S.C. § 102(b). Stay with me—§ 102(b) is from the government and it’s here to help.
The grace period—which literally dates to the Van Buren Administration in one form or another—gives inventors one year to file a patent application following the first public use, sale, or offer for sale within the United States. Failure to act within the grace period destroys the novelty and a patent is unavailable. One year to the day. No exceptions.
So, the short answer is that following that first public disclosure, you have one year to file a patent application. But, it’s not quite that simple.
The new law is occasionally ambiguous as to what conduct triggers the grace period and what conduct is not even a public disclosure, leaving many confused as to what they are allowed to do, and when they can do it. Is it a “disclosure” if you don’t reveal the details of the underlying invention (i.e., demos where you can’t see beneath the hood)? Does a sale between parties under an NDA count at all (the Patent Office thinks it does not, but courts will have the final say, and may disagree). Compounding the confusion, the new grace period provisions are generally untested and inventors should be doubly cautious.
This brings us to the second risk of early disclosure. Most of the world applies an absolute novelty standard meaning that any pre-filing disclosure in these countries makes a patent unavailable. Germany, the United Kingdom, Japan, China, and many others are all absolute novelty countries or have very short grace periods. Even if your early disclosure falls within a grace period, you could still be barred from obtaining a patent in some of the most economically significant markets in the world.
Of course, a small inventor can’t be expected to forecast market interest around the world and file corresponding applications in each country, all before any disclosure of the invention in the U.S.. A patent application in the U.S., even a provisional application, gives you a filing date that will be honored (thank you, Paris Convention) around the world. Your U.S. filing date becomes what is known as the “effective” filing date and gives you another year to file internationally.
This isn’t to say that early disclosure cannot be a useful tool. In certain circumstances an early disclosure on your website or in an article can act as insurance against a later inventor who conceives of the same invention and beats you to the Patent Office. As the law stands, this type of “defensive disclosure” is a risky gambit.
First, such a strategy still snuffs out the possibility of foreign rights (remember those absolute novelty countries). Since you have no filing date prior to your disclosure, you lose your rights in any absolute novelty country. Second, many of the new law’s provisions remain untested and what you think is a “disclosure” or “the invention” may not be what a court thinks it is. And establishing that you were first could get complicated… and expensive. In fact, one of the motivations for changing the law in the first place was to reduce costly priority battles.
More practically though, if you’re able to publish the invention or make a coherent disclosure, you’re probably well on your way to what’s needed for a provisional patent application, the more prudent option.
With all this in mind, what is the cautious, patent-hopeful inventor to do? File early. Filing a patent application, even a provisional application, secures your place at the Patent Office as to what was disclosed in the application. Not only does the U.S. application hold your place in line domestically, but also around the world, preserving your foreign rights, and giving you time to explore foreign opportunities. The filing protects you against the subsequent inventor as well, leaving you the Alexander Graham Bell to their Elisha Gray. Since your filing is only as good as what it discloses, the provisional should be supplemented as the concept develops beyond the original idea.
If you absolutely must make a disclosure prior to filing, protect yourself. Speak to an attorney and obtain NDAs from the participants to the disclosure. Memorialize confidentiality obligations and circumstances of the disclosure.
But when in doubt, file early and file often.