Patent Disclosure: Everything You Need to Know
A patent disclosure is a public claim of data about an invention. It is any part of the patenting process in which data regarding an invention is disclosed.14 min read
2. Why Is a Patent Disclosure Important?
3. What Is Included in a Patent Disclosure?
4. Should I Include Other Patent Contributors?
5. When Can A Patent Disclosure Occur?
6. Should I File a Patent Disclosure on My Own?
7. Tips and Warnings
8. Can I Disclose My Idea To My Family Or Friends?
9. Other Types of Patent Disclosure
10. Should I Disclose to Professionals?
11. Should I Get A Signed Confidentiality Agreement?
12. Disclosure vs. Infringement
13. How To Deal Effectively with Patent Disclosure
14. What If An Investor Wants to See My Work?
15. Frequently Asked Questions
16. Do You Need Help With Patent Disclosure?
What Is a Patent Disclosure?
A patent disclosure is a public claim of data about an invention. In general, it is any part of the patenting process in which data regarding an invention is disclosed. A good disclosure tells someone else how to create the product.
Why Is a Patent Disclosure Important?
The U.S. Constitution gives Congress the right to offer exclusive rights to people for their inventions for set periods of time. This is only if and when the inventor agrees to adequately disclose the invention in writing.
A formal patent disclosure is used by people who are involved in preparing a patent application, such as inventors and attorneys. It stipulates a set of claims regarding the invention, as well as other data that reveals the unique nature of the product. It should be expressed in writing with the United States Patent and Trademark Office (USPTO) as part of the patent application.
Formal patent disclosures done successfully with the USPTO can result in several advantages for the inventor:
- Competitive advantage
- Market share
What Is Included in a Patent Disclosure?
- The Specification. A primary disclosure or "specification" is a main document in a patent application. It describes the ways in which the invention is innovative compared to similar inventions and explains the scope of monopoly the applicant believes he or she has to the invention. The specification describes the item and the way to make and to use it, in clear and exact terms. Someone in the field must be able to reasonably create it with these instructions. Further, the specification notes the patent application filing date on which inventor can the rely. It also offers evidence that the invention belongs to the person in question.
- The Enablement. This explains how to create the object and how someone in the field can do so. The instructions cannot be vague or unclear, but must be exact and detailed. When the patent expires, the enablement should still be usable. This section should include any figures or drawings, with explanations. Again, you will want to show how your invention is special. So, you might want to include many details and different variations of the invention. Later, many of these variations may be deleted from the document as unnecessary. This section may be numerous pages long.
- Best Mode Requirement. The path revealed must be the best way of creating the item within the author's awareness at the time of filing. Therefore, it may include specific or unique techniques. There should be no concealment. A poor-quality disclosure can risk the appearance of concealment.
- Claims. This area tells the reader the exclusive rights the patent offers to the inventor. This explains the item or part of the object that is special. Its newness underlies the claim to its ownership. This list should be in simple and direct sentences. Each sentence will describe something about the object that is new. This will then reveal the monopoly the inventor has. The minimum number of claims is one. A claim can also reference an earlier claim and take on its limitations. This is called a "dependent" claim, and is more limited in scope than the earlier one. Patents protect only what's claimed — not the entire description. Therefore, any information given but not part of the claim may not be protected. If it's not linked to a claim, don't include it. No claim means no protection.
The above elements can be formatted within a simple layout to include the following:
- A title in 5 to 12 simple and basic words.
- The field of the invention. Two sentences are recommended to classify the invention.
- The invention history or background. This explores and explains the challenge that the invention resolves. Don't describe the invention; describe the problem only. Make this quite short.
- A review of previous art and a further background study. Describe in basic terms how people have tried to solve the problem in the past. Explain why previous attempts didn't work. Include copies of this prior work, or at least explain them in detail. This is not an essential part, but it's a good idea to include it because there is less chance another person will make use of the patent information, and you could avoid infringement.
- Invention summary. Include basic terms and features of structure. These would express the way this product is new and unlike others. It's important that this part reflects what you write in the claims section in order to show why the claims are valid. This part may be a few paragraphs long.
- A list of figures and drawings.
- Descriptions of preferred embodiments. This tells how to build the invention and may refer to the figures and drawings.
- An abstract. This is a final summary, which gives the reader a synopsis of the claims, but in a clear, brief form of about 150 words.
The disclosure should either be typed or handwritten in ink. It should be signed and dated by the inventor, as well as by any other creators. Also, someone who comprehends the technology should read, sign, and date the disclosure, to be a witness to the application.
Should I Include Other Patent Contributors?
- Sometimes, it can be difficult to determine who falls into this category. It's best to cover your bases by including anyone who contributed creatively or innovatively to the product. If you're not sure, you should include the person. The final choice about who the inventor is will be decided by your lawyer, who will discuss issues with the people named and figure out which parts of the creation truly can be eligible for a patent.
- Therefore, tell your lawyer about your dues to your employers, any consulting agreements, or other funding issues that can make the ownership of rights vague. Look into them with your lawyer before you apply for the patent.
When Can A Patent Disclosure Occur?
Disclosures are usually made as part of patent applications. You can file a disclosure before your patent application, but keep in mind that some other countries have "novelty bars." These mean that, by placing a disclosure before your application, you might limit your ability to get full patent protection there. For example, in the United States, there is a one-year term called a "disclosure window." This means that you have one year after your disclosure to file a full patent application. This window differs from country to country.
Non-disclosure agreements are possible when filing. These mean that the person filing the agreement feels the data is confidential. However, NDAs are challenging to enforce in reality. An alternative which can sometimes be more applicable is to use both a non-disclosure and non-competition agreement. Still, it's difficult to do so because some people and companies will not sign these.
Should I File a Patent Disclosure on My Own?
When you're ready to work on your patent application, you'll want to seek the help of a patent lawyer. However, if you can, try to do some preliminary work on the application on your own first. This will help you familiarize yourself with the procedures of patenting and gain a good understanding of what's important and what isn't. Doing some of the work will also help you check whether your invention really has the potential for patent, and that it's worth going to the next stage with a lawyer.
- Write about your invention in very basic terms. Don't worry about impressing the reader or making people feel confident about your knowledge on the subject. The key message to convey is why your invention differs from others and what is new about it.
- Less is more. Again, try not to add extra details which do not reveal the newness and utility of the product. You do not need to offer background technical information regarding how the patent operates, unless that is truly relevant to claims involving differentiating the object from others.
Tips and Warnings
- When you complete your disclosure, indicate any kind of commercial use, sale, or public disclosure that has already occurred. This is recommended since these can counteract your patent rights. It's especially helpful to talk to your lawyer about such situations; he or she could advise you whether you've already lost your rights, or if, on the other hand, you can resolve the situation by filing immediately. Once again, bear in mind that the U.S. offers a one-year time span between disclosure and filing, and some other countries don't. That's another factor to bear in mind when considering whether you've lost your rights prematurely.
- As long as you've filed prior to commercial use or public disclosure, you can also file in some other countries within the year after the filing date and you won't lose your rights.
- Always check with your lawyer regarding the patentability of your invention before you begin with commercial use, sale, or public disclosure.
Can I Disclose My Idea To My Family Or Friends?
The best protection is to move ahead with a full patent application and to wait until you have the parent in hand. This will reduce your risk regarding sharing your idea with others.
On one hand, sharing with family and friends is not the same as sharing with the public. And, when doing so, you are requesting their confidentiality. In legal terms, this may not harm you.
However, it is always possible for someone to say something to someone else by accident. And, even if someone does not do so, he or she may say a related idea which inspires its realization in someone else's mind.
Other Types of Patent Disclosure
- Talking to others in private meetings. You can't ever completely protect yourself, but you can do your best to minimize risk. When dealing with companies, try to get a signed non-disclosure agreement or free forms of legal protection such as copyrights and unregistered design rights.
- Public disclosure before a patent is granted. This is dangerous because the disclosure could be considered prior art when the patent application is examined. Avoid media and open competitions — they are only acceptable once you have a patent in hand. The same is true for student projects and publications.
Typically safe situations for disclosure are when you're dealing with a lawyer, patent office personnel, or public servants.
Should I Disclose to Professionals?
It is advisable not to make non-confidential disclosures even after you've filed an application.
- It is possible, though unlikely, to lose the eligibility of patenting by telling a single person — either before or after you've filed an application.
- Often, applicants feel burdened by the expectation to disclose after filing. However, you can't take back info you've made public. Understand the risks you're taking.
- If you disclose, and then a month later you come up with an innovative adjustment or improvement and would like to amend the patent, depending on what you already disclosed, you might lose the eligibility to do so.
- Disclosures in confidence to select people, like talks with your lawyer, are acceptable. These don't become part of prior art.
- Even talking within the constraints in a non-disclosure agreement has risks: Someone can break the confidence, and you may not have evidence to prove it.
Still, if you do have an application on file, in order for someone to seriously compete they would have to go out right away to file their application in order to compete with you — unless your application is not accepted, which can happen. Until you have a full patent granted to you, you have no patent rights. Others can still make or create your work.
Should I Get A Signed Confidentiality Agreement?
Due to the need to prevent public discourse, some people opt for confidentiality agreements. In this case, when the person who signed learns your idea, they are liable for damages if they reveal it — and they can be taken to court if you suspect they did.
Therefore, many people don't want to sign such agreements. Usually, it's not because they want to steal your idea. It's because they will be liable. Plus, if someone else comes up with the same idea as you, the finger may be pointed at them even if they're innocent.
Disclosure vs. Infringement
These protections are two separate things.
Protection against disclosure makes sure that you do not disclose your idea before or after you've filed your patent application (except to your patent lawyer). If you don't protect yourself against disclosure, then someone can apply the data and make a profit. Plus, you might lose the chance to get a patent.
Protection against infringement, however, signifies the formal legal methods needed to protect yourself from someone who infringes on your monopoly once your patent has been granted.
How To Deal Effectively with Patent Disclosure
- Protect yourself, but don't become too worried.
- Don't request payment for your idea prior to disclosure.
- Before talking with companies or others, especially when you don't have a confidentially agreement yet in place, decide in advance what you want to say. Perhaps you will decide to tell them some aspects without sharing the inventive parts. By sharing generally ("it's a unique chair") you might be okay — just don't say what makes this chair so special.
- Recall that the more technicalities you mention, the more the risk.
- Talk about the competitive perks of the idea, but not how they are that way — for example, it's more affordable, it's more attractive, or it's more user friendly.
- Be assertive, yet respectful about your needs to prevent disclosure. If people really want more detail, state that you would need a NDA. If they aren't interested, move on before revealing anything, and if they do sign, still be careful to offer as little as possible. If you have the NDA signed by an expert in your product's area, be wary and mindful when talking. Even a few details may be all they need to get a sense of the concept.
- Don't be fooled by people who state they'll sign an agreement, thinking that they'll buy your work from you. They might just want to talk you into buying services from them. They could be misleading you into thinking that they are helping you, when they're only embracing your optimism. Intelligent inventors often have a natural and rightful degree of passion, and some people take advantage of it.
- Some companies, like manufacturers, often sign confidentiality agreements. It's part of their work. However, it's best to wait until you have the patent in hand (not only an application) before you tell them details.
- Patent lawyers are generally obliged to confidentiality. This is true even if you talk to them but don't hire them later. This is the law. It stands even when the data goes public (this is not the case for confidentiality agreements, however).
- You can offer a very general summary and show some vague pictures to give an idea without offering up the data needed to copy your idea.
What If An Investor Wants to See My Work?
It's reasonably common that serious investors will want to see some of your disclosure material. And, investors often don't want to sign confidentiality agreements. They deal with so many people, that doing this all the time is a liability for them. Therefore, get confidentiality agreements signed when you can, but also understand when others don't want to. If you can't get it signed, walk away and file for your patent. Have a lawyer help make it strong. When you have the patent awarded to you, return to that individual. This is the safest way.
Frequently Asked Questions
- Should I Keep Records While Working On My Invention?
It's helpful if you can keep a clearly written notebook (rather than individual slips of paper). The pages should be numbered to show a sense of progress and organization. Ideally, find a witness — perhaps a reputable friend or family member you can trust — who has the credentials to comprehend what you're developing. This person can sign the pages as you make progress. Keep the notebook in a secure location.
Even though keeping records is a good thing, the best thing you can do for your protection as an inventor is to file a patent application. This will describe many more uses and variations than the notebook can, give more examples and necessary data, provide more evidence, and make it all more formal and official.
- What Else Can I Do To Protect My Idea As It Develops?
Rather than making things complicated with your own record keeping ideas, it's best to file a provisional application. It is less work than a full application but will give you the time you need to prepare the final application. It costs around $100. It's advisable to have the help of a lawyer to make sure it protects you sufficiently, in which case the costs may be more.
- How Confidential Is My Application Prior To Publication?
The USPTO keeps your application secure and confidential. People are not allowed to view it or even validate whether it exists without your approval. However, once again, a priority utility publication may make the earlier provisional application available before the 18-month period.
- When Will The USPTO Publish My Patent?
Patent applications are published 18 months after the date of filing of the earliest provisional or other priority application. Provisional applications may be published before this if they are combined with others in a utility patent process. For example, if you file a provisional at a early date and then file a priority utility patent later, the provisional and the utility may be published together.
In terms of international patents, other countries often publish after 18 months. This is another instance when your work may be published prior to the U.S. patent office.
- What if I've Already Shared the Idea?
If you've publicly shared the idea, you may still be eligible for patent. Your lawyer can advise you about this.
For example, if what was said was in confidence, you may be redeemed in some cases. Or, if the discussion was not detailed enough to qualify as a disclosure, you could be fine. There may also be parts of your idea you had still kept to yourself.
- What Is a Grace Period?
In some countries, people are given time between when filing the patent application and when they start to talk about it. During this time, disclosure is not considered prior art to the application. This applies only to inventor, and not to third parties.
Grace periods vary from country to country. Some countries have model rights that don't regard disclosures out of country. Others may not consider disclosures in the six months before filing to be a problem, especially if they were a result of breached confidence. This is true in the UK Intellectual Property Office and the European Patent Office.
Most countries request that you don't bring your work into the public sphere until you've filed for a patent. Also, in the U.S. as well as other countries, the policy is first inventor to file — meaning that the first person to submit a proper application holds monopoly. Clearly, this is one reason to prevent premature public disclosure.
The 12-month grace period applies in the following countries: Argentina, Australia, Brazil, Canada, Chile, Columbia, Estonia, South Korea, Malaysia, Mexico, Peru, Philippines, Turkey, and the U.S.
Countries that offer a six-month grace period include: Eurasia, Japan, Russian Federation, Albania, and San Marino.
The policy differs in the European Convention Member States. Some European Patent convention states offer a grace period, but usually for utility patents. For these, grace periods must be filed in each state and not at the European Patent Office.
Finally, as already indicated, the United States is governed by a first-to-file policy. Therefore, if disclosure occurs in the 12-month period before filing, it is not considered prior art. Third-party disclosure is also not considered prior art. The first-to-file policy started on March 16, 2013.
- What Do I Do in a Country Without a Grace Period?
If you've disclosed a summation of the invention, you might still be eligible for a patent. If there's not enough detail, or if it's still inventive despite the disclosure, you may be eligible. Check with your lawyer.
In some places, the grace period varies by disclosure type (presentations, papers, associations, societies, tests). To find out which disclosure is applicable, contact a lawyer in that country.
- Disclosures Due to Breach of Confidence and International Exhibitions
In the case of a breach of confidence, most countries will exempt disclosure. If a person engages in international shows, there is a special status, so disclosure is not considered prior art. The participants might need certificates of disclosure.
In both of these cases, the participant must file the patent afterward during a set period. In Europe, the grace period for abuse and for shows is six months. In that time, one must file a European application or an international application that designates Europe.
- Grace Periods for Utility Patents and Intellectual Property
In the European Union, there is a 12-month grace period for registered community designs. In the case of intellectual property, even if some rights can't be obtained due to disclosure, some property rights might still be available.
Utility patents are different from regular patents because:
- They are not examined for uniqueness
- They have a lower inventive aspect
- They are permitted for a shorter time (10 years)
- An international application can transform to a utility model
- The terms of a utility patent vary from country to country. For example, in some places, process and method inventions can be utility patents. In some places, biotech work cannot be considered this kind of utility model while medical devices can be.
Do You Need Help With Patent Disclosure?
Managing patent disclosure can be a complex task. Both over- and under-disclosing can have serious ramifications. If you need help with patent disclosure, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.