Public Disclosure and Patent Bars
What constitutes a public disclosure?
Under patent law, a public disclosure is any, non-confidential communication of an idea or invention. Public disclosures may include the following: conventional academic printed and online publications, abstracts, master's theses, Ph.D. dissertations, open thesis defenses, presentations, poster sessions, department and campus seminars, information posted online and publicly available abstracts of funded grant proposals.
To prevent public disclosure, grant proposal abstracts should be high-level and not describe the invention. Grant applications typically are not made public, although grant final reports can be available to the public and would be considered a public disclosure.
Not all disclosures result in the loss of potential patent rights. In order for a disclosure to bar the patenting of any invention it has to be “enabling.” This means that the disclosure has to provide enough of a description of the invention for a person “of ordinary skill in the art” to practice it.
Public Disclosure Can Lead to Loss of Patent Rights.
In the U.S., an inventor’s public disclosure of their own work made less than one year prior to their patent filing date will not count as prior art. This is referred to as a grace period for the inventor’s own disclosure. Note: the time window between an inventor’s public disclosure and patent application filing date allows others to publish similar work or work that builds off your own work. These intervening publications may prevent or hinder patentability of your invention.
If your public disclosure was made more than one year before your patent filing date, it is considered prior art and may prevent you from obtaining a patent.”
In most countries outside the U.S. there is no inventor grace period and any public disclosure prior to filing a patent application filing can prevent you from obtaining a patent. Foreign jurisdictions require “absolute” novelty. This is the standard in most of the world. Thus, as a best practice, it is always most desirable to determine whether a patent application should be filed before any public disclosure.
Types of Disclosures Qualifying as Public Disclosures
Email correspondence: Providing information to individuals outside of KU by email, letters or other correspondence without indicating that the information being provided is confidential could also constitute disclosure.
Grant proposals: Grant proposals to federal agencies are deemed publications as they are accessible under Freedom of Information Laws, but you can take active steps to ensure that information you provide under grant proposals is maintained in confidence when necessary.
The first page of the proposal should carry the following notice: “Confidential Information--Pages __ to __ of THIS PROPOSAL contain potentially patentable information” List the pages containing the confidential information and conspicuously write “CONFIDENTIAL” on each page that contains the confidential information.
Posters, Abstracts, and Proceedings
Oral disclosures: If at a formal talk, you distribute a copy of your presentation in which your invention is disclosed, it is clearly a disclosure. However, even if handouts are not provided but someone in the audience takes detailed notes that describe the invention, it would also constitute disclosure. For these reasons you need to carefully plan your oral presentations so that you do not inadvertently disclose your invention. Thus conference presentations, departmental seminars, or thesis defense all present opportunities for public disclosure.
Public Use or Sale: Distribution of research materials and prototypes, that embody the invention, may constitute disclosure under certain conditions. If the materials are provided without any restriction on use or further distribution it may be considered to be made available to the public. If they are clearly provided only for testing and/or evaluation or for research purposes under written agreements clearly specifying the same, it would not be considered disclosure. A sale or an offer to sell a research material or prototype also constitutes disclosure and could establish a bar date for patent purposes.
What activities do not constitute public disclosure of an invention?
- Lab Meetings attended by KU employees only
- Faculty Meetings – as long as they are attended only by KU employees
- Confidential Submissions for Publications – provided that the journal has confidentiality agreements with reviewers - prior to acceptance and publication
- Unfunded Government Grant Applications
How can you protect your innovation from public disclosure?
Inventions can be discussed under a confidentiality agreement. Please contact KUCTC for more information.