Patent strategy 101 – Keep it secret

Do you have an invention ready in hand but are not able to file a patent? How will you protect it from being disclosed if you intend to eventually file a patent?

Often disclosure is essential with partners, collaborators, investors, while developing advanced technologies with the help of external agencies and so on. It is sometimes essential to disclose a few bench marking stages for research scholars. Occasionally disclosure takes place accidentally by inventors and at other times, it is done by someone under explicit or implicit duty not to disclose amounting to breach of trust (evident abuse).
Disclosure can also occur as a result of a lack of understanding as to what amounts to disclosure, inadequate clarity on legislative provisions and cases of disclosure in relevant jurisdictions, a lack of disclosure strategy within the organisation or the absence of necessary expert advice.

Explaining an invention to a coworker which actually does not amount to disclosure may become harmful if it is disclosed to another person who is not under obligation to keep it secret. Disclosing an invention to even a single person who denies that he has received it in confidence may be detrimental. Presentation of the invention, during which no presentation materials are circulated, may be harmful when someone takes down notes on the invention. Information submitted to government agencies for grant applications or approval of products can be retrieved under freedom of information and may be disastrous unless it is submitted in accordance with the laws of the state to protect it from disclosure. Commercialization of products incorporating an invention causes disclosure whether it is easy to make out or not.

Find out your key markets and make sure you know the patentability / novelty standard and whether a grace period is applicable under the respective legislation. A grace period is the period of time in which a patent may be filed following disclosure of the invention to the public. Most European states adhere to absolute novelty standard. Only two types of disclosure in the preceding six months from the effective filing date are allowed viz. disclosure by evident abuse of invention without consent from inventor and disclosure in recognized exhibitions. This means if the inventor or third party who derives information from inventor (not amounting to evident abuse) reveals the invention amounting to disclosure, the inventor loses the right to patent forever. The grace period is calculated from the filing date, not the priority date. If a European application has foreign priority, inventors should be vigilant of any disclosure that may take place not only before the priority date but even after filing the foreign priority application because they need to file European / PCT applications within 6 months from any disclosure that can avail a grace period. This means if you want to file EP application or enter EP through PCT, you need to be extremely careful to avoid any activity that might lead to disclosure before and after your foreign priority application. Also if inventors themselves cause this disclosure other than participating in a recognized exhibition, they would forfeit the right to patent forever.

Many other states have six months limited grace period including China and Japan. China provides a grace period, not only for evident abuse and recognised exhibitions, but also for disclosure even in “prescribed academic and technological meeting”. Japan provides a grace period for six types of disclosure including disclosure by experimentation, printed publication and through electric telecommunication means. Some countries have a one year grace period such as Australia, the United States, Canada, India and Korea and allow an inventor to file a patent within one year of disclosure. India allows a priority claim within one year of public working (use) of the invention as long as such public working was required for reasonable trial of the invention.

However since grace periods and the types of disclosure to which they apply varies from country to country, inventors desiring to protect an invention globally or in a large number of key markets won’t be practically able to avail these grace periods. Therefore they require expert advice and a sound disclosure strategy which will allow them to avail maximum benefit without losing the right to patent in key markets with stringent novelty standards, such as Europe. Expert advice is necessary to define when, where, and how inventors may disclose their invention if required. Even when certain disclosure is made, experts can evaluate how harmful the disclosure is to the crux of invention. For example merely describing the benefit of your product may not lead to disclosure because you haven’t described how you have arrived at your product. Expert advice may also include guidance on signing confidentiality agreements with third parties, monitoring for the abuse of the invention and monitoring competitors activities while your inventions are held secret by using a sound intelligence program.

In the end it is good to remember two things:

  • If you must wait to file you patent, keep the invention secret. Patents are granted in return for public disclosure of how to perform them – keeping inventions secret while working them is against this principle and undermines validity.
  • Someone working in your field may come up with a parallel invention simultaneously so use your invention cautiously and maintain close surveillance to monitor competitors’ activities.

Image credit: Pricklebush

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