Thinking about telling everyone about your latest and greatest genius idea? You’d better think twice. Telling others about your idea or invention is a “public disclosure” and could bar you from getting a patent.
What’s a public disclosure?
A public disclosure can be as simple as describing the invention in print, using the invention in public, selling or offering to sell the invention, or making it otherwise available to the public. Common ways for individuals to make a public disclosure include:
- Publishing the idea in a scientific journal
- Describing the invention in an email
- Publishing information online
- Giving handouts during a poster session or oral presentation
- Displaying the invention at an exhibition or trade show
- Talking to friends and family about the invention
What’s at risk?
In the United States, an inventor has exactly one year to file a patent from the date of a public disclosure before losing the opportunity to get a patent. In most other countries (e.g. Germany, the United Kingdom, France, Italy, and Spain), an inventor is forever barred from getting a patent at the moment of public disclosure (presuming he or she has not already filed for protection). A simple conversation could cost you the right to protect your intellectual property forever.
How do I avoid making a public disclosure?
Having parties sign a non-disclosure agreement (NDA) prior to a disclosure will generally prevent it from becoming a public disclosure. An NDA is a contract between two or more parties, and prevents at least one of the parties from using or disclosing the information, usually for a set period of time. If a party to an NDA reveals confidential information, or uses the information for a prohibited purpose, the NDA can provide for monetary damages or injunctive relief.
A good NDA should include:
- an identification of information to be kept confidential;
- obligations of the parties;
- correct party information (The NDA must list the company’s legal name, not its business name);
- length of time for which the information should be kept confidential; and
- exceptions to confidentiality;
- any third party use; and
- any desired terms for dispute resolution (e.g. jurisdiction, arbitration, and fees and costs).
Contrary to popular belief, a catch-all clause to define the confidential information should not be used because the parties may not know precisely what is considered confidential. Furthermore, courts may not enforce an NDA when it is too broad or anti-competitive.
What else should I know?
Confidential information should not be disclosed before the NDA is signed. Otherwise, a party may claim they never agreed to keep the information confidential and refuse to sign the NDA. Also, the NDA should be signed by someone with the authority to bind the party that is receiving the confidential information. For example, the NDA should be signed by a company representative who has the authority to execute contracts.
There are some ways an NDA could fail to protect you including a third-party breach. For this reason, it is important to meet with an attorney to draft an NDA before meeting with any potential business partners or investor. If you plan to file for patent protection or think there’s a possibility of one day filing for a patent, you should request and receive a signed NDA before disclosing any details about the invention. One mistake and you might lose the right to patent your invention forever.