Keeping It Secret: Protecting Your Invention For Foreign Patenting

You’ve got it: the million dollar idea. You figured out how it works. You know that no one has ever done anything like this before and that your discovery is revolutionary. What do you do now? For many people, the answer to that question isn’t “immediately file a patent application with the United States Patent Office” – and that can sometimes lead to problems.

In the United States, inventors have one year from when they publicly disclose their invention before they must file a patent application. This gives inventors a chance to test the market and decide whether it makes economic sense to pursue patent protection. Disclosure without a patent application, however, is fatal to pursuing protection in most other countries. When it comes to seeking patent protection abroad, there is typically no grace period to file an application after disclosure. Disclosure ends the opportunity to seek patent protection in those countries.

Well, our inventor might be thinking, then the easy solution is not to disclose. While this seems simple in principle, in practice there are nuances. When most people think about public disclosure, they think about something like printing the invention in the newspaper or highlighting it in a television interview. Disclosure, however, is much more than that. Let’s say our inventor mentions to their best friend that they’ve finally gotten their invention to work. The friend, wanting to be supportive, buys the first inventive product that afternoon. This sale can be a disclosure, and in one attempt at being helpful, the friend’s purchase may have cost the inventor his opportunity to pursue foreign rights. Similarly, communications to others that describe how the invention works in sufficient detail to allow someone with familiarity in that science or technical area to recreate the invention can be disclosures – even if the communication only reaches a small number of people.

What should inventors do? Sometimes, inventors need to talk with others about the invention, such as collaborators or investors. In these situations, the solution may be found in contract. Before an application is filed, an inventor and these individuals can enter into a non-disclosure agreement covering the invention. This will allow them to discuss the invention while maintaining confidentiality (and the ability to file for a patent abroad).

If an inventor wants to test the market without the large up-front costs of a traditional patent application but without losing the opportunity to file abroad, there is a solution built into the patent laws – the inventor can file a provisional patent application. A provisional application completely describes the invention and is filed with the United States Patent Office. The inventor then has one year to file a full application; if timely filed, the full application gets the priority date of the provisional and any disclosure that occurs after the provisional is filed is not held against the inventor. Once the provisional application is on file, the inventor can disclose and sell his invention while maintaining his ability to file for foreign protection. With their relatively low cost, provisional applications allow for similar benefits as the United States’ one year grace period – there is time to test the marketability of the invention – while still protecting the inventor’s ability to file for foreign protection.

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