Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.
One recurring question that often comes up at Inventors’ Club Meetings is “how much can I disclose about my invention?”
Inventors come to the club hoping to get marketing leads and manufacturing assistance. They don’t intend to accidentally forfeit legal options or dedicate their right to make and use their invention to the public domain.
The topic of this column is to explain what the rules are for telling others about your invention, without forfeiting patent rights.
The Effect of a Public Disclosure of Your Invention
The general rule is that “publicly disclosing” your invention before you file a patent application to protect it can limit your patent rights. A public disclosure means telling anyone how to make and use your invention, other than someone who is a co-inventor or obligated to keep your invention secret. This includes co-workers, spouses and anyone else who promises to keep it under their hat.
A public disclosure of an invention can have implications for your right to file a patent, both in the U.S. and abroad. In the U.S., a clock starts ticking after a public disclosure. You must file a patent application within one year of making the disclosure or your invention will be dedicated to the public domain, meaning that you no longer have the right to obtain patent protection. Countries outside the U.S. do not have a one year grace period; you lose your right to file a patent outside the U.S. immediately upon making a public disclosure, unless you already have a pending U.S. application.
In a nutshell, you want to avoid making public disclosures before filing for patent protection whenever possible. There are two ways to do this, as discussed below. One ways is operate under a Nondisclosure Agreement (NDA). The other way is to make sure your disclosure is “non-enabling.”
Using a Nondisclosure Agreement
One way you can avoid making a public disclosure of your invention is by having the person to whom you are disclosing the invention sign a “Nondisclosure Agreement.” This is an Agreement that imposes an obligation of secrecy upon the person you tell about your invention. I have a free “open source” Nondisclosure Form posted on my website at http://www.milwaukeepatents.com/learnpatents.html in Microsoft Word format you can edit. I’ve also included some instructions as to how you can complete it (as well as a disclaimer that I am not forming an attorney-client relationship with you by providing this document!).
There a few major drawbacks to the Nondisclosure Agreement approach. One limitation is that these Agreements may be impractical and expensive to enforce if someone breaches them. These Agreements are a far more ambiguous form of protection than a filed patent application.
Another drawback is that investors and companies that you may want to approach may decline to sign them. (Other times the companies will simply have you sign their own form.)
Finally, you need to be aware that Nondisclosure Agreements do not protect you from all forms of public disclosure. Specifically, if you make an “offer for sale,” the one-year clock to file an application starts ticking regardless of whether a Nondisclosure Agreement is in place. The term “offer for sale” is construed very broadly; even telling people your product will be on the market in the future, without pricing or other specifics may constitute an offer for sale.
Safely Making “Non-enabling” Disclosures
Sometimes you may want or need to communicate about your unprotected invention, but it is not practical to get a Nondisclosure Agreement (e.g., having everyone at I&E Club Meeting sign one).
In this is the case, you need to make sure that your disclosure is not “enabling.” An enabling disclosure is one which gives someone enough information to make and use your invention.
Generally, you can tell people your field of invention (e.g., “consumer electronics” or “software”). You can also discuss the problem you are working on solving (e.g., “saving energy” or “bio-terrorism” or “a new consumer product”). You can also provide your target market (e.g., “business users” or “teens”). This information gives people enough information to get a sense of your goals, but is not generally not enough information to constitute a public disclosure and affect your patent rights.
Does this sound complicated? It is not really, but it does require you to plan and think before you speak about your invention.
Here is an example I give at my I&E clubs to explain about enabling and non-enabling disclosures:
A non-enabling disclosure (good!): “I am working on an electronic device that promotes weight loss.”
An enabling disclosure (which is the kind you don’t want to make): “I am working on a refrigerator door handle that produces an electric shock.”
If in doubt, ask our I&E club facilitators or an attorney to help you describe your invention in non-enabling terms.
When You Want to Publicly Disclose…
One of the great advantages of filing a patent application is that the patent pending status gives you more freedom to talk about your invention and to market it. In fact, many aspects of the patent process are intended precisely to give you that freedom!
Remember: I'm blogging here, not acting as your attorney; don’t rely on this blog as legal advice for your situation.