When you are filing a patent application, you have an obligation to disclose all information that is relevant to the invention. This includes any information that is known to you, even if it is not patented. This is known as the duty of disclosure. If you do not disclose all relevant information, your patent may be invalidated. In this blog post, we will discuss what the duty of disclosure is, how it affects your patent filing process, and how you can use it strategically.
Caution
Before we move on, there are two things that you should watch out for:
Public disclosure laws outside the US
Public disclosure laws vary from country to country. We will cover the US here, but please note that, in most countries outside the US, you are required to file a patent application before any public disclosure. In the US, you have to file your patent application within one year of your first public disclosure date. If you are a US application to intends to file internationally, then you likely should file your patent application before you make a public disclosure.
Public disclosure law ambiguity
With the exception of a handful to cases, public disclosure laws in the US have not been litigated in Federal Courts with frequency. As such, there is quite a bit of ambiguity in the case law, and it is unclear how courts may decide specific fact patterns. Because of this, most US practitioners have developed “best practices” to help their clients avoid gray areas and to keep them on the “straight and narrow.” We will discuss best practices here, as well as a few finer points in law. But, if you find yourself outside of the best practices, we recommend reaching out to your attorney because interpretation and judgement are a key part of public disclosure analysis in the US.
The Law
What is a public disclosures and why does it matter?
Broadly, public disclosure is any non-confidential offering of information or offering for sale regarding an invention from a printed publication, an instance of public use, or an offering for sale. More specifically, 35 USC 102(a) provides that: “a person shall be entitled to patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
In other words, every time you perform any of the following, you are making a public disclosure:
Printed publication: anything in a fixed-media form such as a scientific/traded journal, article, newsletter, etc.
Public use: any use of an invention used by someone not bound by law (NDA) to keep its use a secret such as a beta testing scenario or trade show testing.
Sale or offer for sale: any selling of an invention for monetary compensation.
Why is this important, you might ask? According to 35 USC 102(b), “Disclosures made 1 year or less before the effective filing date of the claimed invention shall not be prior art to the claimed invention”. This means that inventors have 1 year from the date of the first public disclosure to file a patent application. Otherwise, it’s considered prior art even for you, the initial inventor. Luckily, this grace period can work to your advantage because, at your first public disclosure, the information is considered prior art for your competitors as well. More about this will come into play later.
Frequently Asked Questions
Public disclosure law is fraught with ambiguity. And, as discussed above, there isn’t a ton of case law, so we think it is best to cover this topic in question and answer format. Ready? Here we go:
What are some examples of a “printed publication”?
This one is pretty straightforward. A printed publication is just anything that is written (though not necessarily printed) about your invention that is publicly available. This includes scientific or trade journals, articles, newsletters, advertising, marketing, etc. This publication would describe the invention such that a person in the field could reproduce it.
Here’s an example. In the case of In re Klopfenstein, Carol Klopfenstein and John Brent, who were two chemical researchers at a university, gave a slide presentation at a chemist’s convention meeting at the university. The presentation was presented over two and a half days with no prohibition of note-taking or any NDAs signed. A year later, the two chemical researchers sought a patent on the material that was presented in the presentation. The USPTO denied the application because it held that the presentation a year prior had constituted public disclosure because it was a “printed publication”. The federal circuit court of appeals ended up affirming the USPTO’s decision.
Long story short, be careful about what you “print” or “publish”. It may come back to bite you later. The courts have historically been quite liberal with their consideration of what is a printed publication.
What are some examples of an “instance of public use”?
Instances of public use are a little more nuanced. An instance of public use can be any use of the completed invention by someone who is not legally bound to keep the invention a secret. This can also extend to any commercial use, even if the invention is kept secret. Instances of public use include beta tests, trade showcases, product launches, verbal discussions, business meetings, grant proposals, etc.
What are some examples of “offering for sale”?
Posting something or sale or offering the invention for sale, even if the offer is not accepted, is considered a public disclosure.
Here’s an example of an important case in this area. In the case of Pfaff v. Wells Electronics, Inc., Wayne Pfaff developed a new computer chip socket for Texas Instrument (TI). TI would go on to order and use Pfaff’s chip socket shortly after. Pfaff later pursued a patent for his chip socket, receiving the patent in 1985. Shortly after receiving the patent, Pfaff sued Wells Electronics Inc., a rival company manufacturing a similar type of computer chip socket, for patent infringement. The district court sided with Pfaff but upon appeal, the federal circuit court of appeals ruled that Wells’ did not infringe on Pfaff’s patent because it was invalid in the first place. The chip socket had been offered for sale to TI for more than one year before filing the patent application.
Here’s another long story short: be careful of any even implying that you are selling anything that you aim to patent down the road. This can unintentionally start a clock that you do not want to start yet (ie. 1 year grace period).
Can you lose patent rights from publicly disclosing?
Yes. In the US, you can lose patent rights after 1 year from the date of public disclosure if you haven’t filed by then. Outside of the US, any public disclosure invalidates patent rights.
What is not considered public disclosure?
Any presentation of the invention NDAs or confidentiality agreements are signed, disclosures without specific details of the invention, and licensing agreements are not considered public disclosures.
What should I showcase about my product without publicly disclosing it?
Ideally, you would want to err on the side of caution and disclose as little as you can about your invention.
What about my own published patent application somewhere else in the world? Would that count as a public disclosure?
Yes. This would count as prior art – even to you, the original inventor – and would forfeit your chances of patenting.
How Do You Submit Disclosure Material to the Patent Office?
The best way to disclose information to the patent office is through an IDS (Information Disclosure Statement). An IDS is a document that lists all of the relevant information that you are aware of related to your invention. It should include any patents, publications, or other documents that contain this information. You can submit an IDS along with your patent application or at any other time during the prosecution of your patent.
What should I list in my IDS?
You should list any prior art that is related to your invention. This should include US patents, US patent application publications, foreign patent documents, and non-patent literature documents. All of these will have their own section of the IDS when you fill one out.
When should I submit my IDS?
You should submit your IDS within three months of filing your nonprovisional patent application. Ideally, you should do this sooner rather than later. You may submit an IDS after 3 months with the payment of fees. However, IDSs must be submitted before the last office action during prosecution. (If you fail to submit your IDS before the notice of allowance, you must re-open prosecution to submit your IDS).
How can you use targeted public disclosures strategically?
Companies such as Xerox and IBM have used these four targeted public disclosure strategies to great effect in the past. These strategies were documented in a research paper from the University of North Carolina.
Below is a summary of these strategies, but you can check out the full details in the original paper here.
Strategy #1:
Disclose information about inventions that you do not plan to pursue patents for but believe that rivals might.
This is a sort-of spoiler tactic for competitors because it disables them (and you after 1 year) from pursuing a patent for your invention. The USPTO provides that patent applications are evaluated with respect to prior art and that patent applications are only valid if the invention is a significant advance over that prior art. By publicly disclosing your invention, it becomes part of the prior art that competitors would have to contend with when trying to patent inventions exactly like or similar to yours.
The logic follows in cases where you and your rivals might be working on the same type of technology but you aren’t quite ready to put yours to market yet or you have doubts that your technology will be profitable in the market.
Strategy #2:
Disclose information to see if your invention is marketable.
Before committing to any patent applications, you can use public disclosure to test the waters if your invention is marketable. You can also sell or offer to sell your invention to see if there is market demand for your product at a viable price point. You can do this all while avoiding the cost of applying for a patent until you determine marketability (as long as you file within one year of the disclosure date in the US).
Strategy #3:
Disclose information about inventions to extend the patent race with competitors.
By disclosing information about a developing technology or invention, you expand the prior art and therefore raise the threshold of validity that a patent must attain. In doing so, this buys you time to extend the race to patent between you and your competitors.
Say you are leading in the race and have made more progress with a particular technology. Extending the race raises your competitor’s continuing research costs making it harder to continue in the patent race. Let’s now say the opposite: you are lagging behind in the race and need to catch up to your competitors. Extending the race can allow some more buffer time to catch up.
Strategy #4:
Disclose information to educate the USPTO about your technology.
Sometimes you may find yourself patenting in a particular field and there might be a lack of information about prior art. This can seem daunting, but in fact, this gives you a special opportunity to be the one to establish prior art. Disclosing in a field less populated with prior art can educate the USPTO on where to examine prior art. After having established the initial prior art, it becomes easier to prove that your future patented invention is nonobvious.
The logic follows that if you are the primary source of knowledge of prior art about a particular field that you want to patent in, you are the foremost authority on why a future patent would be a departure from that prior art. At this point, you’ve essentially educated the USPTO on where to look and what to look for.
Using a targeted public disclosure strategy can open your opportunities in the broader market you are trying to penetrate with your inventions and technologies. You can do this all while avoiding the upfront costs of patenting immediately. While not the be-all and end-all, using a target public disclosure strategy can help you stay competitive in the market.