Should I publicly disclose my invention before filing a patent application?

quanedison's Avatar

There are commentators who believe that inventors would benefit from publicly disclosing prior to filing a patent application, based on the “exception” provision under new law of 35 USC 102. However, as a practical matter, it is very risky to publicly disclose prior to a filing of a patent application primarily for the following reason: There is always room for improvements on the original invention. If the inventor discloses the original invention, and a competitor sees it and improves on it and file a patent application on the improved version, then most likely the “exception” clause under 35 USC 102 will not apply and the inventor will lose out.

I generally do not post other attorney’s blog, but in the interest of time, below is a link to a posting relevant to this topic. Also, I have tremendous respect for this law firm. If the link does not open when you click on it, you may want to copy and paste the address.

http://www.finnegan.com/resources/articles/arti...

-Quan

posted August 16, 2013 04:56 (
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chief's Avatargold

John’s 2 year grace period tactic seems to be an uncertain and a risky one from legal stand point, and is mainly driven by the lack of fund from what John explained. But entanglement with the law seems to be the one that most inventors can least afford.

posted August 17, 2013 01:04 (
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funfam4's Avatargold

Just for the record…when you submit an idea here at Edison Nation it wouldn’t constitute “public disclosure” as they have recently amended the Innovator’s Agreement to include a new confidentiality clause AND…should it proceed through the evaluation stages to presentation (G7)…the search sponsors have signed NDAs with Edison Nation as well.

posted August 16, 2013 17:51 (
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mger80's Avatargold

John,

I completely get what you are saying. But in your scenario, if you disclosed it without an NDA to a company (surely one who makes similar products as yours), they could easily make the improvement and file. Not only that, they could likely start manufacturing and selling their improvement pretty quickly, and put you right out of business.

So, although it is an option, it’s a more risky option.

posted August 16, 2013 17:10 (
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let-them-fly's Avatargold

That’s not the point, John; what’s raising the proverbial red flags is the way the submissions director of an Invention Submission Company is Blitzkrieging the message…. as if it’s so vitally important to you to do so!
It begs the question, why?

Certainly you must recognize the undertones of that?
Don’t you?

posted August 16, 2013 14:43 (
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quanedison's Avatar

Hi John,

Fair enough – I do acknowledge that there are commentators who advocate public disclosure prior to patent application filing. And I appreciate your representation of that view. However, if an inventor is to pursue this course, the inventor should be fully informed that:

(1) the “exception” clause of 35 USC 102 is not settled law. The courts will have to weigh in. So there is a huge uncertainty in the future about what the law may be regarding this “exception” for public disclosure;

(2) the USPTO has taken the position that third party’s disclosure of improvements of the original public disclosure will disqualify the inventor’s reliance on the “exception” clause. Given that there is always room for improvements, there is a high probability that the inventor will not be able to rely on the “exception” clause for the early disclosure of the original invention. If the courts eventually affirms the USPTO position here, then the inventor should be 100% sure that his/her original invention cannot be modified/improved in anyway.

With both views presented fully, each inventor can decide the best course of action for himself/herself.

Respectfully,

-Quan

posted August 16, 2013 08:25 (
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vonhuber's Avataree_badge

Thanks Quan..I learn a lot from your posts…please keep them coming.

posted August 16, 2013 07:04 (
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williamj's Avatargold

I’ve been watching this debate since day one and I must admit I have learn a surprisingly large amount of information. And, I again admit, that I still get confused and a little perplexed at the legalese (old dog new trick kinda thing).

And as long as I am admitting, I might as well admit that my life has been full of mistakes and errors.

That being said, if I am to error and or make a mistake in this field of endeavor, I choose to error on the side of caution. I choose not to (intentionally) make any public disclosure or disclosure of any kind prior to I.P. protection.

That’s my story and I’m stickin’ to it!

williamj

posted August 16, 2013 06:46 (
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wherritt's Avatargold

Thanks Quan. Great article. It settles the issue for me.

posted August 16, 2013 05:55 (
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cowbell's Avatarg8_badge

Excellent post Quan. Thank you.

posted August 16, 2013 05:47 (
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marcus's Avataree_badge

Thanks Quan,

Good article, important to all of us.

posted August 16, 2013 05:46 (
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