Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.
Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).
Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:
“(1) An invention shall be taken to be new if it does not form part of the state of the art”,
and defines the state of the art as comprising:
“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).
In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.
So how do I know if I’ve publicly disclosed my invention?
You are likely to have disclosed your invention publicly if, before filing a patent application, you have:
- Talked to investors, business partners, friends, or potential clients about your invention
- Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
- Got a Kickstarter page in which the invention is disclosed
- Posted a document about your invention on a website
- Been on Dragons’ Den
- Given a talk to an audience or displayed a poster at a conference,
- Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
- Published an article, an abstract, or a grant proposal
- Given away or sold samples
- Shown your invention at an exhibition (with some exceptions)
- Used the invention in a public place
There are, however, caveats to be voiced about the above list.
Confidentiality
Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.
Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.
Website postings
With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.
If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL
(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and
(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,
then the document was made available to the public […].
Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.
You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.
Emails
In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.
Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.
I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?
Not necessarily.
To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.
If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.
Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.
Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.
In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.
