How to keep your disclosure from becoming prior art


Rory Pheiffer

How to keep your disclosure from becoming prior art

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While courts continue to grapple with the confines of what constitutes a public disclosure, what we do know is that absolute secrecy is not required, says Rory Pheiffer of law firm Nutter.

The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, often a business case can be made for an early disclosure. By considering what actually constitutes a public disclosure, and the factors that courts take into account, it’s clear that avoiding any and all discussion of the invention may not be necessary.

The issue of public disclosure is important for patent applicants to take into account, as according to 35 USC §102, “a person shall be entitled to a patent unless the claim invention was patented, described in a printed publication, or in publish use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”

Patent protection is a quid pro quo—as an incentive for disclosing the details of an invention to the public, the inventor is granted a limited “monopoly” on the invention to prevent others from practising the scope of the invention. When the invention is already known to the public, through disclosure by the inventor or another, there is no exchange to be had and a patent will not be granted.