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Tips to Help Keep Your Disclosure from Becoming Prior Art, Part 1: What Constitutes Disclosure?

The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.

To better understand the question, we start with some background on why the issue of public disclosure is so important for applicants to take into account. Many readers are familiar with 35 U.S.C. § 102 and the novelty requirement. In order to obtain a patent, an applicant must claim a novel invention—in other words, something that has not yet been disclosed to the public. Public disclosure of the invention prior to the application’s filing date means the invention lacks novelty. Note, however, the one year grace period that exists in the United States under 35 U.S.C. § 102(b)(1), as discussed below. This grace period is non-existent in many foreign countries.

Further, § 102(b) states that even disclosure by the inventor can destroy novelty. This follows from the idea that patent protection is a quid pro quo—as an incentive for disclosing the details of an invention to the public, the inventor is granted a limited “monopoly” on the invention to prevent others from practicing the scope of the invention. Where the invention is already known to the public, through disclosure by the inventor or another, there is no exchange to be had.

Fortunately, the United States has a one year grace period in which an application may be filed after an inventor’s own disclosure. The same is not true for many foreign countries, however. The rules pertaining to whether an applicant may obtain the benefit of a grace period vary by country, as some grace periods apply in certain situations only. Further, the length of any grace period varies by country too. For example, at least the following countries have a 12-month grace period in some form: United States, Argentina, Brazil, Canada, Mexico, Republic of Korea (South Korea), and Singapore; at least the following countries have a 6-month grace period in some form: Australia, Japan, Russia, Saudi Arabia, and United Arab Emirates. China, the European Patent Office, and most European countries do not have any grace period, except in narrow circumstances. The World Intellectual Property Office provides a convenient chart of details about grace periods on a per country basis.

Furthermore, the grace period is limited to one year only. For these reasons, applicants must be careful not to publicly disclose their invention inadvertently.

General Rules of Public Disclosure

There are multiple ways in which public disclosure of an invention may occur, including description in a patent or printed publication, public use, and public sale. This post focuses on the issue of public disclosure in general, by a “printed publication,” which can be surprisingly broad. For more information on other § 102 considerations, see our previous posts.

The Federal Circuit recently reflected on the issue of public disclosure in Medtronic, Inc. v. Barry. The case questioned whether distribution of a CD containing a video demonstration and a binder containing portions of a slide deck distributed at several group meetings constituted a public disclosure. Referring to Blue Calypso, LLC v. Groupon, Inc., the court explained that public accessibility is the “touchstone” to determining whether a reference has been publicly disclosed. Further, the court explained that there are many ways in which a reference can be disseminated to the general public, and thus it is necessary to consider the facts and circumstances of each case.

In perhaps the most obvious form, public disclosure of a printed publication can occur when the material is placed in general circulation (such as in a magazine advertisement, a promotional publication, and a newspaper article). Applicants should keep in mind that very little actual circulation need take place if the work is directed to those skilled in the art. An invention described in a printed publication placed in general circulation typically constitutes a public disclosure.

Another potential form of public disclosure relates to disclosures made to a select group of people, such as at a conference or at a group meeting. While many such disclosures often constitute public disclosures for prior art purposes, the analysis requires consideration of a number of factors that can cause such disclosures to not rise to the level of a public disclosure for prior art purposes.

Distribution and Discussion in Group Meetings

Intuitively, discussion of the invention at a large conference is a something to avoid until a priority date is secured, but what about discussion in a meeting with three or four executives from another company? What if the information is shared in a handout with a small group of experts in the field? As we stated above, the ultimate question is whether the materials are publicly accessible to interested persons in the field. In order to answer that question, courts have considered the following factors:

  • Whether there is an expectation of confidentiality between the distributor and the recipients of the materials, even in the absence of a formal legal obligation;
  • Size of the meeting;
  • Nature of the meeting and whether the meeting is open to the public interested in the subject matter of the material disclosed or instead limited to members of a certain group;
  • Who attended the meetings, taking into account the expertise of the target audience; and
  • Whether the materials were distributed without restriction.

By taking into consideration what actually constitutes a public disclosure you are able to confidently share your invention in a way to get valuable, and practical, feedback to further development or commercialize the product.

Now that we’ve honed in on what qualifies as a public disclosure, our next post will evaluate guiding principles, trends, and examples to help you keep your disclosures from constituting prior art. Read part two here

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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