Pre-patent disclosure of your invention

There are many times that you need to disclose information about your inventive concept to third parties such as vendors, contractors and investors. The best possible protection is to have a patent application filed before any such disclosures are made so that there is no risk of waiving patent rights or creating prior art. However, in some cases, the invention is not sufficiently enabled until it is further developed, and to do so requires disclosure to third parties for assistance. What do you do?

First, it is imperative to have non-disclosure agreements in place to avoid the third party disclosure from being deemed a public disclosure. It is also important that the disclosure not include any offer to sell or license the invention and that you keep accurate records of all of your communications with the third party. This paper trail will be necessary if the invention is misappropriated and you need to commence a derivation proceeding on an invention patent filed by the third party.

Another strategy might be to publish the invention and then file a patent application within one year of the disclosure, taking advantage of the personal grace period provided in the new patent law, the America Invents Act (AIA). This publication would be prior art against any other inventor that files a patent application after the publication date and would block any publication by a third party from being prior art against your patent application. This is a risky approach, however, as it bars patentability in most foreign countries that have absolute novelty rules. Even in the US, you must be careful not to invoke a statutory bar or create prior art – the product announcement must not be a sale or offer for sale. Thus, it should not announce the launch of the product in the marketplace; rather, it should detail the inventive features of the apparatus or process.

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