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Silence is Golden: Why Speaking About Your Invention Can Jeopardize Your Patent Rights

by | Aug 2, 2023 | Intellectual Property

Picture this: you have developed a groundbreaking invention. One that could change your life. You are bubbling with excitement to share your idea with others. But did you know that speaking about your invention can potentially prevent you from obtaining a patent? 

The Importance of Patents

Before diving into the concerns of discussing your invention, it is critical to understand why patents exist. For a set time (usually 15 – 20 years), patents grant inventors the sole exclusive right to their inventions. This enables them to capitalize on their idea, and it prevents others from using, making, or distributing it without their consent. 

Once granted this protection, it encourages inventors to share their ideas with the public while giving them an edge over their competitors. However, that competitive edge may vanish if an inventor fails to apply for a patent before the public learns of their idea.

What is “Prior Art”?

In the United States, the legal principle that governs the issue of public disclosure on patent rights is known as “prior art.” Prior art consists of the references or documents which may be used to determine the originality of a claimed invention in a patent application.

The specific statute that addresses this issue is 35 U.S.C. § 102: “Conditions for Patentability; Novelty.” This statute outlines the requirements for obtaining a patent, stating that an invention must be novel. Section 102(a)(1) further explains that an invention is not considered novel if it was described in a printed publication or in public use, on sale, or otherwise available to the public before the filing date of the patent application.

Silence Matters

Thus, an invention may not be eligible for patent protection if it has been publicly disclosed before filing a patent application. Public disclosure can include speaking about the invention, publishing articles or papers, presenting at conferences, or even posting information online. Once an invention becomes publicly available, it may be considered part of the prior art, rendering it unpatentable.

By discussing your invention before filing a patent application, you risk losing the novelty requirement. This risk remains even if you are speaking with trusted friends, family, or within closed circles. In the current era of global connectivity, information spreads rapidly, making it almost impossible to control. 

Once your invention is public knowledge, it is impossible to un-ring the bell. So, the best practice is to be cautious with any disclosure. Keep your invention confidential until you have filed a patent application – and file with urgency.

A Grace Period

The good news: If you have spoken publicly about your invention, you may still be able to patent it if you act quickly. 35 U.S.C. § 102(b)(1) specifies a grace period for inventors who disclose their own inventions. 

According to this provision, a disclosure made within one year before the filing date of a patent application is not considered prior art that would invalidate the patent. In other words, if the inventor publicly discloses their invention but files a patent application within one year of that disclosure, they may still be eligible for patent protection.

However, it is important to note that the grace period only applies to disclosures made by the inventor themselves or by someone who was authorized to disclose the invention by the inventor. Disclosures made by others – or any public disclosure outside of this limitation – may still be considered prior art and can jeopardize the inventor’s ability to obtain a valid patent.

First-to-Disclose > First-to-File 

Many patent professionals classify the USA system as “first-to-file.” Put simply: Even if you have objective proof that you invented something before another person, if that person independently invented the same object and filed for a patent before you – then you have no recourse under most circumstances. 

However, the single year grace period of 35 U.S.C. § 102(b)(1) arguably transforms the USA system to a first-to-disclose scheme rather than “first-to-file.” 

To illustrate, consider Inventor A and Inventor B. In the same year, Inventor A publicly discloses an invention on January 1st, and Inventor B separately invents and files a patent application for the same invention on February 1st. 

If Inventor A files within one year of her/his January 1st disclosure, she/he will have the rights to the invention – even though she/he filed after Inventor B. If Inventor A never files, or files after more than a year, then Inventor A would lose the right to a patent.

Despite the above, Inventor A is incentivized to file rather than wait. Why? Because the USPTO may not know about – or may fail to find – Inventor A’s public disclosure, and they may mistakenly grant Inventor B the patent. Consequently, Inventor A would need to initiate a post-grant proceeding, which can be costly. 

Additionally, remember that this only applies to domestic patent rights in the USA. Most other countries do not have this grace period and will not allow you to obtain patent rights after public disclosure.

File First – Talk Later

Securing a patent for your invention can be a complex and time-consuming process. To increase the chances of obtaining patent protection, it is advisable that you keep silent until a patent application has been filed. By avoiding public disclosure, you can safeguard your rights and maximize the potential value of your invention.

Written by Bennett May, Summer law clerk, Marks Gray, PA.


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