When is it safe to disclose your invention?

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This article was first published in the Waikato Business News.

When you have an idea for a new invention, it’s only natural you’d want to share it. Discussing your product or process with others can provide valuable feedback and help you work through any issues or concerns. But if you want to turn your idea into a profitable business, it’s essential to consider intellectual property protection before disclosing details.

Implications of disclosure

To secure a patent and/or registered design, the product or process in question must be ‘novel’, i.e. new or not previously known. Once unprotected information has been made available to the public on a non-confidential basis, however, it is free to be used by anyone and cannot be patented, so disclosing details of your invention could hinder your chances of commercial success. Common scenarios where this might occur include submitting your design to a competition, crowdfunding for investment, releasing teasers on social media, or discussing it with others online or in-person.

While it is obvious to see how public disclosure can be avoided, in some instances it may be necessary to share details of your developments with a third party prior to filing a patent or design application. For instance, when hiring people to assist in developing your prototype such as draughtsperson, engineers, or designers; when working with suppliers, accountants, manufacturers and distributors; and when engaging with potential buyers or investors. These types of disclosure can also invalidate a subsequent patent or design registration as disclosure of information to anyone (even only a single person) might be deemed a public disclosure if there are no agreed constraints on how that information can subsequently be disseminated.

Registered Patent Attorneys like those at James & Wells are bound by law to keep client information confidential, so it is safe to disclose your information to them without a written agreement.

Which tools can help?

Confidentiality – or non-disclosure – agreements can be used in situations when it is necessary to disclose details of your invention. A disclosure in breach of an obligation of confidence will not invalidate a patent or registered design application. Also, you may have a legal remedy against anyone who discloses details of your developments in breach of the confidentiality agreement.

New Zealand law also offers a grace period for public disclosure and/or use allowing an invention to be made public (under certain conditions) provided that a complete patent application is filed within 12 months of disclosure. However, grace period provisions should not be relied on as a general strategy, particularly in companies seeking to obtain protection in multiple jurisdictions, as not every country offers grace periods and, if they do, the requirements and details can
differ.

Disclosure following the filing of a patent application

Even after a patent application has been filed, disclosing your product may limit your future options. You might continue to make improvements or modifications to your invention and may even discover new uses that were unforeseen and therefore not covered in the initial patent application. These developments must also be protected by a further patent application before being disclosed.

If you need more time to develop your invention before filing a complete specification or before incurring the costs of overseas applications, it is sometimes possible to extend the deadline by post-dating a patent application by up to six months and forfeiting your original application date. An alternative to buy more time is to withdraw your application and re-file it at a later date. However, these options are only available if there has been no public disclosure, use or sale of your product before the post-dated/new filing date.

What should you do?

The most prudent advice is not to make non-confidential disclosures of your product or process prior to filing a patent or design application, and even once a patent or design application has been filed. However, if commercial realities necessitate public disclosure, use or sale of your product, then options are available. But it is essential that you obtain further legal advice to minimise your risks and maximise your opportunities.