Skip to main content
Patent Filing & Litigation

Managing the Balancing Act of Public Disclosures

By August 1, 2022No Comments

Public disclosures are an essential milestone in the innovation lifecycle and vital to an inventor or organization’s strategic and administrative goals. For publicly funded entities like universities and non-profits, public disclosures serve a legal reporting purpose and are a regulatory requirement.

Failing to prepare an accurate, timely, and well-written public disclosure may lead to limited freedom to operate and decreased market share. Here are a few key elements for your next public disclosure to help protect and grow your IP portfolio.

1. Consider Timing

A public disclosure acts as the first declaration of intent to publish or patent. This impacts the date of initial filing as outlined by the 2013 America Invents Act. Public disclosure protection in the US allows for a grace period between announcing an invention and applying for a patent. If appropriate criteria are met, public disclosures can act as an initial date of application filing and the starting point for patent protections.

Overall, there are several advantages to public disclosure and establishing a first to file date.

  • Acts as the starting date for patent protections
  • Can help protect market share
  • Reduces concerns about idea theft when engaging third-parties

Executing a public disclosure is important to regulatory requirements, maximizing the opportunity at hand, and streamlining future invention-related documentation.

When and How to Disclose

  • Disclose an invention as soon as it’s deemed one.
  • Don’t use enabling language if the disclosure is not ready to patent.
  • Consider the risks and implications of unintentional disclosures.
  • Avoid making invention disclosures public until descriptions are properly vetted.

The purpose of public disclosure is to establish dates of invention, invention scope, and an idea as non-published prior art. Public disclosures comprise the initial notification of an invention and establish its chronology and description when seeking patent protection. Your public disclosure form will likely include the names of the inventors, technology transfer information like current licensing agreements, and sources of funding as required by the Bayh-Dole Act.

Descriptions must be reproducible by industry professionals. The description will include the basic specifications of the innovation, its importance, and how it can be distinguished from other prior art. Descriptions should include what technical advantages the invention provides as well as which specific components the inventor believes are novel.

Unintentional Disclosure

According to the US legal code, officially disclosing an invention does not have to be formal or even intentional. That’s why inventors must be aware that previous publishing of an idea, even in an earlier stage of development, can constitute a disclosure. In addition to reviewing prior art, inventors must also consider their own publications or products previously brought to market when determining the novelty of an idea.

This can be tricky in academic environments where inventors also have the responsibility of publishing research. Ideas not fully differentiated from published literature could make your invention patent or prior art ineligible. Organizations work to avoid unintentional disclosures through a variety of operational procedures, including confidentiality agreements.

2. Balancing Disclosure Benefits

One challenge of disclosures is balancing the need to disclose with fully developing an invention’s description. While there are effective technologies and strategies to facilitating early-stage innovation cycle development, these ultimately can’t be rushed. But there are risks to jumping too soon. Chief among them is composing a lackluster disclosure form in an effort to move quickly. Invention disclosures can lack the attention to detail needed to become an effective basis for prior art or a patent application.

Disclosure regulations allow for this natural evolution of an invention’s development. Keeping disclosure forms up to date also helps maintain a record of an invention. With the most up-to-date record on file 1) you are more likely to maintain the priority date set by the original disclosure and 2) you don’t risk making the original version obsolete, thus possibly running afoul of the laws your original disclosure was meant to satisfy.

Defensive Publications

Some companies, especially smaller ones or those minding costs, may opt not to immediately file for a patent after a disclosure. They may choose a defensive IP strategy instead, crafting a disclosure that will form the basis of prior art in order to prevent competitors from patenting the idea.

IP.com’s editing team can support the writing of technical and defensible descriptions in a format that’s easy for colleagues and patent examiners to grasp. IP.com makes publishing prior art with our Prior Art Database an expedient and effective defensive IP strategy.

3. The Impact of Disclosures on Global Patenting

One benefit to the public disclosure process concerns global patents. Not all of the 156 Patent Cooperation Treaty participants allow for a year-long grace period like the US. While some have their own grace periods, they are subject to different rules and requirements that may not be satisfied by disclosing in the US. One should not necessarily assume that protection in the US extends to, or will be granted by, foreign entities.

To maintain patent eligibility globally, ensure that your patent filing in the US is submitted within the year allotted to establish your priority filing date. Future global patents will be linked to your US patent and an attached priority claim.

  • Subscribe To Our Blog