Patents and Confidentiality: What You Need to Keep Secret and Why

Shhh... It's a Secret:

Most inventors know that when they come up with what might be a patentable invention, they should keep their invention under wraps to avoid getting their ideas stolen. But there are also lesser known and potentially more important reasons for confidentiality before filing a patent application with the United States Patent and Trademark Office (USPTO). We'll explore those reasons in this article, as well as limited circumstances in which it might actually be beneficial to disclose your invention to others.

First Inventor to File Wins the Race:

U.S. patents are governed by the Leahy-Smith America Invents Act ("AIA") which, as of March 16, 2013, changed the patent system from a "first to invent" to a "first to file" system. This means that, regardless of your actual date of invention, you may be able to obtain a patent if you file your application with the USPTO before your competitors file. (Note that there are some narrow exceptions to this, such as the concept of being the "first to disclose," but we won't get into that here.) However, you have to be very careful about what you do with your invention prior to filing a patent application, because certain activities might render your invention unpatentable.

Confidentiality is Key:

The general and most critical rule you should know about pre-filing confidentiality is: public use, sale, and disclosure of your invention more than one year before effectively filing a patent application will prevent you from obtaining a patent. In other words, after you make your invention available to the public, the AIA gives you a one-year grace period to file a provisional or non-provisional patent application with the USPTO. There are no extensions—once that year is up, you've permanently lost your opportunity to obtain a patent. Here are some examples of what might constitute being "available to the public":

1. Selling, or offering to sell, your invention—anywhere in the world.
2. Using* your invention in public, even if no one notices that you're using it.
3. Displaying your invention in public, even if no one realizes that your invention is on display.
4. Disclosing your invention in a publication, including in marketing materials such as blog posts, interviews, and on social media.

*There is an exception for experimental use, but whether a use is experimental depends on a multitude of factors, decided on a case-by-case basis.

On the flip-side, this means that private use of your invention might be perfectly fine. Examples of permissible private use might include:

1. Disclosing your invention to a someone—such as a potential investor, manufacturer, or distributor—who has signed a non-disclosure agreement ("NDA" a/k/a confidentiality agreement).
2. Disclosing your invention to a patent attorney in the process of seeking legal advice.
3. Secretly using your invention in a place where you have a reasonable expectation of privacy, such as in your own home.
4. Maintaining your invention as a trade secret, so long as you take reasonable precautions to keep it a secret.

The Takeaway:

Be mindful of which activities you engage in before you file a patent application, get non-disclosure agreements signed whenever you're disclosing your invention to others, and be sure to consult a patent attorney if you're uncertain of which precautions you should be taking.

At Res Nova Law, our experienced intellectual property and business attorneys can help you assess the pros and cons of patenting your invention, walk you through the process of seeking patent protection, prosecute your patent application, ensure your invention isn't actually infringing on someone else's patent, and help you enforce your patent rights against infringers.

Get in touch today for a free, 20-minute initial consultation.

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