It's a secret! Disclosures and patents

It’s not unusual to tell someone about an invention or innovation, often in an attempt to drum-up funding or sales for a business. Such “disclosures”, as they are known, can ruin your chances of getting a valid granted patent. But not all disclosures are a problem, only those in which information has been disclosed to someone who is not obliged to keep the information secret.

So if a disclosure has taken place, don’t panic. Gather as much information about the disclosure as possible and contact your professional advisor. Be ready to answer questions about what was disclosed, when, to whom, whether there were conditions of confidentiality and where you want to file a patent application (if anywhere).

When did the disclosure take place?

For a disclosure to jeopardise a patent application it has to be made before the patent application is filed. This means that any disclosure made after the patent application is filed will not affect the specific matter in that patent application. However, even if a patent application has been filed, it would be prudent to ask your professional adviser if it is OK to make a non-confidential disclosure since this may affect a further application to similar subject matter, if filed within a year of the initial filing.

Was the disclosure confidential?

Disclosures which are made in confidence do not affect a patent application, even if those disclosures are made before the patent application is filed. You do not have to have a written confidentiality or non-disclosure agreement in order for a disclosure to be confidential, but it is recommended.

To whom was the disclosure made?

The relationship between the disclosing and receiving parties can be important in establishing whether or not a disclosure is confidential. For example, offering to sell something to a third party will usually be held to be a non-confidential disclosure which could jeopardise a patent application; asking a supplier to make something for you will often be held to be a confidential disclosure.

What was disclosed?

In order for a disclosure to knock-out any subsequently-filed patent application the disclosure has to be enabling i.e. contain enough information so that someone could make the invention from the disclosure. If very little information was disclosed or key bits of information were missing, then you could still file a patent application and obtain valid patent protection. Secondly, it may be that the recipient of the information could not understand it (unlikely but possible).

What was disclosed may also depend to a certain extent on how a disclosure took place. Putting a description of an invention on the internet will be a disclosure of whatever is described on the internet. Selling something or offering something for sale will be a disclosure of whatever is being sold or offered for sale (unless that offer for sale is made confidentially except in the US where even confidential sales are a problem). Telling someone verbally about an invention is also a disclosure. As long as information is available, then that constitutes a disclosure. For example, an unread, old PhD thesis gathering dust on a shelf is a disclosure, so long as the thesis is available to read.

What if a disclosure was non-confidential?

Even if there has been a non-confidential disclosure, all is not lost, by any means.

If a disclosure was made in breach of confidence (for example, someone discloses information in breach of a non-disclosure agreement or a verbal assurance not to disclose the information to another party) then you may still be able to get a valid granted patent. You must act quickly because in many countries the patent application must be filed within six months of the breach of confidence disclosure. If the disclosure was made in breach of confidence you may be able to take legal action against the disclosing party. If you take legal action, contemporaneous notes of what happened could be important.

Even if the disclosure was non-confidential and was not made in breach of confidence, you may still be able to obtain valid patent protection. For example, you could still get a valid patent for any aspects of your invention which were not mentioned in the disclosure and which are new and inventive over the disclosed information.

Some countries (such as USA, Japan, South Korea, Taiwan, Australia, Canada, Mexico and Russia) have a grace period (typically 12 months but 6 months in some countries) in which patent applications can be filed after a first non-confidential disclosure is made by the applicant, and in which case the disclosure will not jeopardise any subsequently-filed patent application.

It’s also worth noting that the law on what constitutes a disclosure which could jeopardise a patent application varies from country to country. For example, as mentioned above, in the US confidential sales and offers to sell can count as disclosures which could jeopardise a subsequently-filed patent application.

So if a disclosure has taken place, gather as much information as you can and discuss the matter with your professional advisor as soon as possible. Talk to your advisor about confidentiality (non-disclosure) agreements and other ways of protecting confidential information.

Get in touch if you would like to discuss this or any other IP related issue.