Loose Lips Might Sink IP Ships

You have just come up with a new and exciting invention. Understandably, you are keen to disclose your invention – perhaps to a potential investor or external collaborator. However, disclosing your invention in the wrong way, at the wrong time, or to the wrong person, may prevent you from being able to effectively commercialise your invention. In particular, you may find that you are unable to obtain useful patent protection for your invention. So it is important to understand how the inevitable tension between disclosing and patenting your invention can be effectively managed.

Two of the fundamental requirements to get a patent for an invention are that the invention is novel and inventive over the prior art. The prior art is generally everything that has been made available to the public before the filing date of a patent application, and includes written disclosures, oral disclosures, and physical products that have been accessible in the public domain. So, if you know that you want to protect your invention through the patent system, it is important to ensure that there is no public disclosure of your invention until you have filed your patent application. Even after filing a first patent application to your invention, there may still be advantages to controlling the disclosure of your invention (for example until a priority-claiming application is filed and/or your patent application publishes).

Of course, it is likely that there are people to whom you will need to disclose your invention before filing a patent application, such as colleagues, your patent attorney, and select external third parties. Here, it is important to make sure any disclosure is confidential so that it does not harm a future patent application. Generally, your colleagues will be bound by confidentiality by virtue of their employment contract, and your patent attorney by virtue of their professional obligations. Disclosure to external third parties though can be problematic, given that as a default they will not be bound by confidentiality.

If you do need to disclose your invention to an external third party before filing a patent application, such as a potential investor or collaborator, it would be prudent to have in place an appropriate non-disclosure agreement (basic non-disclosure agreements can be found here). This is true even if you trust the third party because interests can diverge – ensuring that such agreements are in place may even reassure third parties by showing you are knowledgeable about IP and how to protect your invention. It is also worth considering how much information you actually need to disclose to any third party, given that a disclosure lacking certain details may not be sufficiently specific to prejudice a future patent application. For example: does a detailed description of your invention add anything to an investor pitch or public talk, or is your audience more interested in a high-level account of your invention? Even a disclosure made under a non-disclosure agreement might somehow leak out, and so avoiding disclosing unnecessary details of your invention gives you an extra layer of protection.

What if you think that there may have been a disclosure of an invention before a patent application has been filed? Don’t worry, all is not necessarily lost as there may still be options available to obtain useful patent protection - but it can be important to act quickly. For example, it may turn out that the disclosure is not as damaging as first thought because important information regarding the invention was not disclosed. It may also be possible to make use of various time-limited grace periods around the world to discount a disclosure made by the inventor of a patent application, or even to remedy (at least from a patent perspective) a breach of confidence. However in such situations, it is important that the right type of patent application(s) are filed at the right time, and in the right way. This is especially so given that requirements vary between jurisdictions and a “non-standard” approach may be needed.

It is also worth remembering the significance of confidential information outside of the patent system. For example, there may be more value in keeping your invention a trade secret, rather than pursuing protection through the patent system, in particular if a third party would not be able to reverse engineer your invention. Although you would then not have the potentially powerful monopoly protection of a patent, protection for a trade secret is not limited in time or geography as a patent is, and would exist in perpetuity as long as control of the trade secret is maintained.

So, having processes in place to: (i) identify inventions and potential public disclosures; (ii) control access and dissemination of confidential information; and (iii) ensure that individuals are aware of their obligations with respect to confidential information, will help you build, optimise and navigate your IP ships to ensure they contribute to your commercial goals.

Article by: Kapil Tuladhar | 28 April 2021

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