Patent Basics II - Do I Have to Keep My Invention Confidential?

(This is the second post in my series on Patent Basics; the first post can be found here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

Do I Have to Keep my Invention Confidential?

Paying attention to some basic points can help you make sure that you don't lose your patent rights even before you file your application. This post will cover the importance of knowing when to disclose your invention, and appreciating what consequences follow from doing so.

Disclosing Your Idea

In the United States you have one year from the date you first disclose or sell your invention to the public before you have to file your patent application. If you fail to file within this time period, the parts of your idea that were disclosed to the public become part of the “public domain” and can be used by anybody for free. This applies to sales as well, presuming that the sale of the product puts the workings of the invention in the hands of the purchaser.

Our world is increasingly interconnected, however. If you anticipate that you will want to apply for patent protection outside of the U.S., then the public disclosure or sale of your invention takes on much greater significance. That's because in order to secure a patent in most other countries, you need to have your patent application on file before you disclose your idea to the public.

What “Public Disclosure” Means

What constitutes a “public” disclosure of an invention is not always clear. There are some general guidelines that will help you figure out when you might be getting close to doing so.

Disclosure generally involves revealing enough of the workings of the invention so that people who work in the technical field of the invention can figure out how it works. Enclosing a mechanical invention in a proverbial “black box” to hide its inner workings is thus one way to reveal what an invention does without revealing how it does it (though if there is enough in the way of description of how the invention works to teach someone what's going on inside the box, then the black box will do little good). A sale of a product that includes the invention will also be considered a disclosure, since the purchaser can take the product apart and “reverse engineer” it.

Any recorded description of the invention that can be accessed by the relevant members of the public risks being considered a public disclosure. This includes white papers, advertisements, video and audio recordings, thesis papers, abstracts, trade show exhibits, and the like. Oral disclosure only is more of a gray area, though it's generally a good idea to avoid gray areas wherever possible.

Who is “The Public”?

The relevant members of the public can be a smaller group than the public at large. For example, if you work in a particular industry and your invention relates specifically to that industry, and you disclose your invention at an industry group meeting, that may very well be considered a public disclosure even though the general public did not attend that meeting.

But My Investors Want to Know What's Going On

One way to disclose your invention without risking patentability is to disclose it only to people who have agreed to keep it confidential. That is often necessary when dealing with investors and customers, who want to know what you're working on even while you're still developing it. The courts have generally agreed that if you require people to sign a meaningful confidentiality agreement before you disclose your invention to them, it will help protect you from tripping up on the public disclosure issue. You have to make sure, of course, that you otherwise treat the invention as confidential, at least until your first patent application has been filed.

Procedures Can Help

Your employees should be aware of the importance of the disclosure issue. It is a good idea to have in place some written procedures for dealing with the invention process. Many companies have invention disclosure forms that are completed by employees who believe they have invented something. These forms are forwarded to an individual or a committee responsible for making decisions about which inventions the company should seek to protect by way of a patent. These procedures and forms can all reiterate how important it is to treat each invention as company confidential information unless advised otherwise.

Employee Assignments

The mention of employees brings to mind the concept of the invention assignment. Patents in the U.S. are filed in the names of the individual inventors, not their employer. Most companies have invention assignment requirements in place, preferably in the form of a written agreement that each employee (or each technical employee) signs when joining the company. These agreements typically assign the entire invention to the employer, and allow the employer to advise the Patent Office of the assignment so that the patent application moves forward in the name of the company. Both the application and the patent then belong to the company.

These assignment agreements can also impose a confidentiality requirement on the employee. Even if the employee ignores the obligation and discloses the invention to the public, a court may take note of the confidentiality agreement and any company confidentiality policy and rule that the unauthorized disclosure was not a “public disclosure” that would hurt the invention's ability to be patented.

Your patent counsel can help you put together a set of policies and agreements that, if followed, will help you make sure you don't lose the opportunity to patent an invention because of a public disclosure problem.

The next Patent Basics post will discuss the importance of the “prior art search,” and will explain why even a comprehensive prior art search is rarely a sure thing.