Exposing of your idea or invention to the public more than 12 months before you file for patent protection may prevent you from obtaining patent rights to your idea or invention. There a number of ways you could have disclosed your invention to the public in the legal sense – the examples shown here only illustrate a few of those ways. Particularly, the United States Patent and Trademark Office is interested to see if you have publicly 1. disclosed, 2. used, or 3. offered for sale the version of your invention that you are attempting to patent.
What is a public disclosure?
Publishing an article or blogging about your invention – in enough detail such that the reader would be able to make and use your invention based on what he learned from the reading – would be a considered public disclosure. Giving a presentation about your invention at an event open to the public in such detail would be considered a public disclosure as well.
What is a public use?
Using your invention in an area open to the public would be considered a public use. For instance, if you invented a “hovering skateboard” and used it on the public city streets, this would constitute a public use. Premiering your invention at an event open to the public would also be considered a public use.
What is an offering for sale?
When you offer to sell your invention to the public, it is considered an offering for sale. If it was done in private, then it may not be considered a public offer. Discussing the sale of your invention, or entering into negotiations to sell your invention, is not necessarily an offer to sell it.
The Experimental Use Exception
The USTPO does not treat experimental use as public disclosure. For instance, if you are testing your invention out in the presence of the public such use would not be considered a public use if the people present were aware they were witnessing an experiment. There are many exceptions to this rule and is highly advised to contact a Patent Attorney prior to publically testing your invention.
The Attorney-Client Privilege
Discussing your idea with a Patent Attorney is not considered a public disclosure. Similarly, submitting your idea to SmartUp® is not considered a public disclosure.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.
Source: Smartup Legal