How to avoid inadvertent disclosure of your IP

13 July 2015

One of the essential conditions for obtaining a patent on an invention is that the invention is ‘new’. This means that, on the day you file your patent application, the invention must not have been published, or indeed made available to the public in any way.

As an inventor or business person it is really important to ensure that any of your ideas which could potentially be protected by a patent (or a registered trademark or design) are not publically disclosed before an appropriate IP application has been filed.

What counts as public disclosure?

Clearly, publication in a journal, magazine or on the internet is a public disclosure, as is a verbal statement given in a public place. However, many other types of disclosure which are not so obviously public can also destroy your chances of obtaining IP protection. For example:

  • A conference abstract submitted in advance, which is sent out to delegates before the conference or which is made available for collection, is considered to be published from the date it was sent out or made available.
  • A message or comment posted on a website counts as a publication, and due to the nature of international time zones the date of publication may actually be the day before you posted it (e.g. if a comment is posted in the morning of 20 December in Britain, this is the evening of 19 December in Japan so the publication date is actually 19 December). Subsequently removing a comment does not undo the fact of its publication.
  • Displaying an item in a public place discloses an invention embodied in that item if a specialist looking at the item would be able to understand the nature of the invention. Concealed features will also be considered as disclosed if dismantling of the item is permitted.
  • Conversations in public places are generally public disclosures, unless everybody present in that place understands the information is to be kept secret. Even then, a confidential disclosure made to too many people can cease to count as confidential.

What can you say about a new idea?

It is not considered a disclosure of an invention to discuss it in such general terms that it would be impossible for even a person skilled in the relevant field to understand how to work the invention. However, a further essential condition for obtaining a patent is that the invention is not obvious in light of what was publically known at the filing date. There is always a danger that even vague statements about an invention could, in combination with other publically available information, enable a skilled person to figure out what the invention is and thereby render it obvious. The best course of action is to say nothing at all in public about the nature of an invention before your IP applications are on file.

For business purposes it is often necessary to discuss an idea, for example with potential investors, or with an IP professional, prior to filing an IP application. In these situations it is essential to ensure that such discussions are confidential. IP professionals are legally bound to keep confidential any information shared by their clients, but this will generally not apply to other third parties with whom you might need to discuss your invention. In such situations you can ask the recipient of the information to sign a written confidentiality agreement.

It is generally best to follow these precautions even after an IP application has been filed at the relevant IP registry at least until you reach a point where public disclosure cannot be avoided (e.g. because your product is ready to be released onto the market).

If you have any questions, please contact me on email or over the phone.

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