How to keep your disclosure from becoming prior art

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.

The most obvious form of public disclosure is when the material is placed in general circulation (such as in a published patent application, a magazine advertisement, a promotional publication, or a newspaper article). Another potential form of public disclosure relates to disclosures made to a select group of people, such as at a conference or at a group meeting. While such disclosures often constitute public disclosures for prior art purposes, the analysis requires consideration of a number of factors that can cause such disclosures to not necessarily rise to the level of a public disclosure for prior art purposes.

Types of meeting

Intuitively, discussion of the invention at a large conference is something to avoid until a priority date is secured, but what about discussion in a meeting with three or four executives from another company? As articulated in the recently decided Medtronic v Barry (June 2018), the “touchstone” issue is whether the materials are publicly accessible to interested persons in the field.

In order to properly identify whether the disclosure can be used against the patent filer, courts have considered the following factors: