This short article outlines why and when a patent is invalidated by public disclosure. Most inventors and designers are aware that new inventions must be kept private before deciding whether or not to file for legal patent protection.
The obligation of secrecy is mandated by law in several countries across the world, including the United Kingdom.
One of the prerequisites for receiving a valid patent is that your innovation is new. Disclosing your invention to the public in any way before your patent application is filed might be detrimental to your patent application (or granted patent).
However, before patenting a concept, the designer will typically wish to put it to the test. As a result, one or more prototypes are frequently necessary.
How to avoid invalidating your patent?
If you need to test a prototype, how can you prevent invalidating your patent? The following are some possible suggestions:
1. Only test a prototype after a patent application has been filed.
However, in other circumstances, this may not be feasible because the trial-and-error period is critical to the development of a working idea.
2. If you need to test a prototype before filing, do it in a private setting that is not visible to the public or accessible to it.
It’s especially important to avoid keeping or utilizing your prototype in a space where a passer-by passing down the street may see it via a window. Testing a huge agricultural machine, such as the seed drill in the example above, inside may be problematic. If you have no other choice than to test outside, make sure the public has no access to the innovation.
Where public access is restricted but the innovation is nonetheless visible to the public and it is evident how the invention works when viewed (as in the preceding court case), ensure that the public does not have a direct line of sight to the invention, even from afar.
A member of the public, on the other hand, is unlikely to be seen with a drone equipped with a camera. As a result, while a fence sealing the three openings in the hedge in the previous example may have been sufficient to keep the prototype testing from being declared a public revelation, this is becoming less likely as drones, camera sticks, and other equipment become more widespread.
In any event, hiding how the innovation works may be a possibility, such as concealing the device or encasing it in housing to make it a ‘black box.’ If a member of the public who is skilled in the area of the invention is unable to figure out how the invention works, there is no disclosure.
3. Keep your creation hidden from everyone who isn’t working on it.
One of the greatest strategies to minimize inadvertent (or purposeful) exposure by a third party is to limit who has access to the information.
4. If you must involve a third party (such as friends or relatives), make sure they understand the situation is confidential.
A non-disclosure agreement (NDA) should be signed prior to the disclosure. In practice, though, convincing friends and relatives to sign an NDA may be a challenging task. Before exposing the idea to a friend or family member, you may text or email them and notify them that both your innovation and the revelation you’re going to make are confidential.
5. In certain countries, such as the United States and Japan, inventors have a 12-month grace period after public publication to file a patent application.
In contrast to the United Kingdom and Europe, this 12-month disclosure grace period can be quite beneficial. If you do decide to publicly disclose your invention in Japan or the United States, make sure your patent application is filed within 12 months of the public disclosure.
Because the United States and Japan aren’t the only nations with a disclosure grace period, you should look into if other countries of interest have one as well.
You can find the list of UK IP Firms here.