Publicly disclosing an idea before submitting its patent application is one the most common ways of compromising the patentability of an invention. In fact, once an idea is publicly disclosed, such idea becomes prior art of the invention, and therefore the invention will no longer meet the novelty requirement that, together with the inventive step/non-obviousness and the industrial application (utility) criteria, constitute the three requirements by which the invention is examined by the patent office.
What is then considered public disclosure, and does it really prevent patentability of an invention?
Public disclosure is any non-confidential document or presentation that describes an invention. Examples of public disclosure are publications in paper or electronic formats, abstracts, oral or poster presentations at conferences, thesis and other oral defenses (master’s thesis, Ph.D. dissertation, etc.), department and campus seminars, publicly available abstracts of funded grant proposal submissions to federal agencies.
However, there are situations that require an inventor to disclose some information about the invention, for instance, when seeking the advice or help from a colleague from another academic institution. In such case, it is advisable to ask that person to sign a non-disclosure agreement (NDA) also known as a confidential disclosure agreement (CDA). The NDA is a legally binding contract that establishes a confidential relationship between two parties and prevents them from releasing, to the public, sensitive information obtained by a party during the discussion for a period of time indicated in the agreement. The NDA makes the other party liable for damages if they reveal the information about an invention, and they can be taken to court. There might be cases where people refuse to sign an NDA not because they want to steal an idea but rather because they might be considered liable in the case of a leakage of confidential information. Thus an inventor should always prepare two sets of documents describing the invention, one containing non-confidential information to be sent to any party interested in the invention, and one containing confidential information to be sent, upon executing an NDA, only to those parties that have shown an interest in licensing the invention.
Lab meetings, faculty meetings, and seminars presented in other departments of the same academic institution of the inventor are not considered public disclosure but may have repercussion on the patentability of an invention because of the first-to-file rule (see below).
Submission for publications of articles (prior to their acceptance and publication) are usually confidential provided that the journal has signed a confidentiality agreement with each of its reviewer (always ask the editor).
In case of a grant submission to a federal agency, to ensure that the information provided in the grant application is kept confidential, it is advisable to add the following statement on the first page of the proposal
Not all disclosures result in the loss of potential patent rights. For a disclosure to prevent the patenting of an idea, such disclosure has to be “enabling,” meaning the disclosure has to provide a description of the invention that is detailed enough to enable a person “of ordinary skill in the art” to practice it.
Imagine for a moment that I am disclosing that I have invented a new chocolate cake. We all know that cakes are most likely made of flour, sugar, baking powder, milk, and eggs. Even if I list all the ingredients, I doubt someone is able to reproduce my exact chocolate cake because that person does not know the amount of each ingredient and the process I used: are the egg yolks mixed with sugar and beaten until fluffy? Are the egg whites beaten until stiff? What is the chocolate, cocoa powder or chocolate chips? Is there a “secret” ingredient, like a hint of nutmeg, or a pinch of lemon zest, or a few drops of vanilla extract? What is the order ingredients are added to make the batter? And lastly, what is the temperature of the oven and for how long is the cake baked? These are all details that enable a person with “skill in the art” to replicate my invention, the chocolate cake in this example.
In the unfortunate event that an inventor has publicly shared the idea, in some countries, disclosed inventions may still be patented thanks to a “grace period,” which allows an inventor to file a patent application within a certain time after publicizing the invention because the earlier disclosure is not considered to be prior art to that patent application.
Basically, a grace period allows 6 or 12 months for filing a patent application after a public disclosure.
The grace period varies from country to country. The US, Canada, South Korea, Singapore, Australia, Japan, Turkey, etc., have a 12-month grace period whereas the Russian Federation, Eurasia, San Marino, and Albania have a 6-month grace period (For a complete list of countries see: https://www.wipo.int/export/sites/www/scp/en/national_laws/grace_period.pdf)
During the grace period, the public disclosure from an inventor is not considered prior art to the application, but this applies only to the inventor(s) or the person who is entitled to apply for the patent, not to independent disclosures by third parties. Thus, grace periods should not be relied upon to postpone the filing of a patent application and obtaining a filing date for that patent application.
In conclusion, whenever possible, avoid public disclosure before filing a patent application, and as an inventor, keep in mind that in most countries, the policy is “first-to-file” by which the right to the grant of a patent for a given invention is assigned to the first person that files a patent application on that invention, regardless of the date of the actual invention.