The impact of public disclosures on patentability
It is always frustrating to hear from a client seeking advice regarding the patentability of their invention, that they have been disclosing details of their invention to third-parties without having obtained a non-disclosure agreement (“NDA”) or having filed a patent application. This unfortunate reality often results in great disappointment on the part of both the inventor and the patent attorney when it is determined that patent rights have been lost as a result.
Many patent jurisdictions throughout the world are “absolute novelty” (a.k.a. “strict novelty”) jurisdictions. What does “absolute novelty” mean? In short, it means that if you, or someone you’ve spoken with publicly discloses your invention to any third-party via direct or indirect means (e.g., trade show materials, thesis papers, etc.) and outside the protection of an NDA or a filed patent application describing the invention in question, your patent rights in absolute novelty jurisdictions have likely been effectively donated to the public.
There are some nuanced aspects to the absolute novelty systems throughout the various jurisdictions, such as, for example, “non-prejudicial disclosures” as provided for at Art. 55(1) EPC governing the EPO. This regulation grants a six-month grace period for filing of a European patent application for an invention for which a public disclosure occurred in the six months prior to the filing. Note that the six-month period does not apply to the filing of a priority document in a different jurisdiction, but only to the filing of the European application. Moreover, the “grace period” is valid in only two situations:
1) where an evident abuse in relation to the applicant or his legal predecessor resulted in the disclosure; and
2) where the disclosure was made by the Applicant or his legal predecessor at an official, or officially recognised, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.
Proving an “evident abuse” is, in practice, very difficult to demonstrate to the satisfaction of the EPO in most instances. Indeed, without an executed non-disclosure or other contractual agreement, it may be nearly impossible to prove.
The second situation requires a supporting certificate issued by the organizers of the Convention that must be obtained during the convention. Again, this may be very difficult to obtain. Therefore, a prior public disclosure will most often result in loss of patent rights at the EPO.
Contrast the European system with that of the United States where, according 35 U.S.C. 102(b)(1), a grace period exists for filing a patent application for an invention for which a public disclosure was made within the previous year (i.e., 12 months) by the inventor, joint inventor, or third party who obtained information from the inventor. Thus, in the U.S., unless an unrelated third party has independently conceived of and publicly disclosed the subject matter of the invention, a prior public disclosure that would otherwise result in a loss of rights in many jurisdictions throughout the world will not affect the inventor’s ability to obtain patent protection. This remains true as long as that disclosure was not made more than one year before the effective filing date of the U.S. patent application.
To avoid potential loss of rights, best practices dictate that no disclosure of the invention be made to any third-party, other than your attorney, until some form of protection is obtained, either via a signed NDA or a filed patent application.
However, even if you believe you may have lost rights due to a disclosure, it may still be possible to obtain patent protection in one or more jurisdictions by way of a grace period. In view of the above, a full evaluation of your case by a qualified patent attorney can frequently result in a positive outcome for at least one patent jurisdiction.