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  • Writer's pictureCassandra L. Wilkinson

Public Disclosure and Patentability

You have a great idea, and you want to share it with your boss, your coworkers, your spouse, your patent attorney, potential investors, the world, or at a minimum, with all of your Twitter® followers, but be careful. Your words and actions can have unknown consequences if you ever decide to seek patent protection on that great idea.
In the United States, patentability is guided by 35 U.S.C. § 102, which outlines the statutory bars to patent rights. One of those bars involves public disclosure. Section 102 describes the impact of public disclosure on patent rights:
A person shall be entitled to a patent unless ... the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Section 102 does provide a one year grace period:
A disclsoure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention ... if ... the dislcosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Most other countries have a similar rule regarding public disclosure, but do not have a similar grace period.
You might be surprised at what constitutes public disclosure. While publication in a book or journal seems like an obvious form of disclosure, there are other, less clear means of releasing information to the public, including lectures, seminars, and in some cases, even conversations with an individual. Since the laws vary from one country to the next in terms of each method of disclosure described, and since the basic principle outlined in 35 U.S.C. § 102 has been refined through complex case law, the underlying message is that it is important to handle your intellectual property with care and consult with a patent attorney to ensure both the patentability and protection of your invention.
In general, the laws in the United States tend to be more liberal than the laws in many other countries in terms of what constitutes disclosure and the impact of said disclosure on patentability. Any type of oral or written revelation is sufficient by definition in many countries. The standard in the United States lends more to written disclosure, although the types of writing can be inclusive of advertisements, slides presented in a meeting, and even private correspondence. Additionally, in the U.S., inventors benefit from the one-year grace period; in most other countries, public disclosure results in ineligibility to file for patent protection immediately.
This article provides some basic guidelines that may assist you in determining when, to whom, and in what detail you should divulge your ideas. What is considered public? What is considered a disclosure?
First and foremost, conversations with your patent attorney are always confidential, which is why this is always an excellent place to begin your process in the patent world. The United States Supreme Court described the attorney-client privilege as the “oldest of the privileges for confidential communications known to the common law. United States v. Zolin, 491 U.S. 554, 562, 109 S. Ct. 2619, 105 L.Ed.2d 469 (1989). Since the Supreme Court later defined the work of a patent attorney as the practice of law, the attorney-client privilege thus extends to the patent attorney as long as the content of such conversations are related to obtaining legal advice on patentability.
In general, restricting use to locations in which one could assume a reasonable expectation of privacy or using the invention for one’s own enjoyment is not considered public. It is not considered public disclosure to divulge your ideas to friends and family, or even to coworkers (although workplace disclosure and ownership of ideas involve another whole set of principles which may also be discussed with your patent attorney).
Those outside your intimates and workplace require greater care. The best protection you can have is to file a patent application. Once you are patent pending, if a competitor uses your invention, the inventor or assignee can sue for patent infringement if, and only if, the application eventually issues. Damages start to accrue upon issuance or upon the publication date if the application is published. If the inventor can prove that the infringement was willful, triple damages may be awarded. Also, the inventor may also obtain an injunction to force the competitor to cease production of the infringing product once the patent issues.
If you decide to talk to those outside of your workplace prior to the filing of the patent application (and it cannot hurt to have one even after filing), it is imperative that the inventor secures a Confidentiality/ Non-Disclosure Agreement. The use of such agreements prevents any conversations with potential investors from being seen as public disclosure. Your patent attorney may prepare the agreement for you or review any agreements prepared by the parties interested in your invention.
Another aspect of public disclosure revolves around defining exactly what constitutes a disclosure. The act of proclaiming for example, “I just invented the internet,” is not considered a disclosure. In most instances, to act as a bar to patentability, the disclosure must be descriptive enough to enable one skilled in that art area to replicate the invention. In patent language, this concept is known as “enablement”, described in 35 U.S.C. §112, first paragraph, for the amount of description required in the specification of a patent application:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
This same level of description can be used to define how much detail is required to consider whether or not disclosure has occurred.
However, when an invention is either offered for sale or shown to the public, it is not necessary that the demonstration be enabling as described above. Even if the observers would not have been capable of figuring out how something works, such a display is still considered a disclosure. In one notable case, in re Blaisdell, 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957); Hall v. Macneale, 107 U.S. 90, 96-97 (1882); Ex parte Kuklo, 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter. 1992), laboratory visitors were permitted to view a machine, of which the invention in question was simply one small component, not visible to the audience. In this case, the court ruled that even though the invention was completely hidden from view and even though the observers may or may not have had any understanding of the science employed therein, the viewing reached the level of disclosure.
In summary, the best way to safeguard your invention is to seek patent protection. Until 2007, the United States Patent and Trademark Office offered a Disclosure Document Program to provide an inexpensive method of documenting an idea. The United States Patent and Trademark Office now encourages inventors to file a provisional patent application if they are not prepared to file a utility application to achieve the same results of securing a filing date for an idea. Finally, seeking the advice of a patent attorney is always beneficial. While there will always be those who endeavour to steal ideas, it is best to try and prevent expensive and lengthy court battles by protecting your patent rights through good practices.
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