Beware of public disclosure

By December 7, 2016Blogs

I’m not an expert. I’m just a guy who likes to think about stuff.

You have an invention idea and you want to patent it. Trouble is you don’t have a lot of money. You think that if you present your idea to people willing to fund it, like angel investors, they’ll pay for the patent application. Sounds like a plan, right? Perhaps.

Oftentimes, inventors will pitch their invention idea to angel investors (or others with deep pockets) to fund their invention idea. Some of the money the inventors receive can be used to fund a patent application. A potential problem arises if the pitch to the investors is deemed a public disclosure. Essentially, if the inventors tell the investors what their invention is and how to make and use it, this information can be used by others to invalidate the patent.

After telling the investors about the invention, the inventors have a year to file for a patent application. If the inventors fail to file an application within that year, the meeting with the investors can be deemed a public disclosure. Here is an example to explain this concept.

You have an invention idea and have scheduled a pitch meeting with potential investors on August 1, 2016. The investors take many pitch meetings and never sign non-disclosure agreements, meaning that anything you tell the investors can be deemed a public disclosure. At the pitch meeting, you tell the investors what your invention is and how to make and use it. According to US Patent & Trademark Office (USPTO) patent office rules, you have until August 1, 2017 (i.e. 1 year from the pitch meeting) to file a patent application. If you file a patent application after August 1, 2017, you’ve obviously taken more than 1 year to file the application. You submit the patent application on September 1, 2017 (more than a year after the pitch meeting) and eventually receive a patent for your application. If someone can prove that you made the public disclosure at the investors meeting on August 1, 2016, that person can invalidate your patent. You didn’t follow the rules! You took more than a year after the pitch meeting to file the patent application. You lose.

The investors in this hypothetical are typical. Most investors receive so many pitches, they refuse to sign non-disclosure agreements. To avoid having your patent invalidated, file a provisional patent application before meeting with investors. In the provisional application, explain what the invention is and how to make and use it in as much detail as possible. Once you file the provisional application, you can talk to potential investors about anything that is in the provisional application. If the investors decide to invest in your invention, you can use some of that money to continue the patent process (i.e. filing a utility application and paying the associated fees). Keep in mind that a provisional application expires a year after filing. To give yourself the best shot possible at securing investor funding before the year is up, my next post will focus on effective pitching techniques.

 

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