What Can I do if I’m About to Publish Something About my Invention?

Public Disclosures

Publishing information about your invention, whether it be a scholarly journal, white paper, blog post, knowledge base article, marketing material, or otherwise, might be considered a public disclosure which could be a bar to patent protection.

This is not to say you can’t share information about your patentable product/service or invention. For example, if the online or printed material does not enable an appropriately experienced individual (“person having ordinary skill in the art”) to reproduce your invention, it may not be a public disclosure. It is important to note, however, that any information disclosed without limitation or obligation of secrecy may be a public disclosure.

Public disclosures can include printed publications, public use, sales, or an offer to sell your patentable product or service. This article looks at how printed publications about your patentable product or service may affect foreign and U.S. patent rights and what you can do to protect those rights.

1. What is a Printed Publication?

A printed publication must be printed (or be online), published, and describe the invention such that it enables a person of ordinary skill in the art to make and/or use the invention.

For a printed publication to be considered published, it must be circulated and accessible to the public to some extent. Printed publications can include:

  • Patents, patent publications, periodicals, journals, books, newspapers, magazines, white papers, trade catalogs, conference papers
  • Websites,  blog postings (including third-party blog postings), knowledge base articles, emails
  • Notes that were taken during a meeting, conference, trade show. etc. and then published. This might occur when you announce your product or service to investors or other interested people, and a blogger or someone else publishes information about your announcement.

Why is Public Disclosure Such a Big Deal?

The USPTO will not issue a patent for an invention that has prior art. Prior art may be an existing patent or published application; public use, sale, or offer to sell; or an (un)intentional public disclosure.

2. Foreign Patent Protection Concerns

In many countries outside the U.S., publishing information about your invention before filing a patent application can make it difficult, and sometimes impossible to obtain a patent in those countries. The information may be a blog post, an article, marketing material, etc.

While this information can be useful in creating excitement about your invention, online and offline sharing of photos, videos, or even basic descriptions of your invention can bar patent protection in countries outside the U.S. This is because unlike the U.S., in many other countries there is no grace period.

However, filing a patent application before a public disclosure establishes priority rights for applications filed outside the U.S. provided you file in a country that is part of the Paris Convention and file within a year of your U.S. filing date.

3. U.S. Patent Protection Concerns

If you do not want patent protection in countries outside the U.S., and instead only want patent protection within the U.S., you’ll want to file a patent application within a year of the publication. This is because the U.S. only offers a one-year grace period where if you file a patent application within a year after publicizing your product or service then the earlier publication is not considered prior art to your patent application. Thus, you would mark the one-year anniversary of the publication on a calendar and be sure to file a patent application before the year was up.

It’s also important to note that patent applications are evaluated based on the date they are filed. When your patent application is examined by the USPTO, the examiner assigned to your patent application will examine your patent application against all prior art, including patent applications, before the filing date of your patent application. Prior art is the public body of knowledge relating to your invention that exists before your invention. Because priority is given to patent applications that are filed first, you’ll want the earliest possible filing date to help reduce the amount of prior art that may be used to show your invention is not new, and to help avoid losing out on patent protection by someone who filed first.

Before You Publish Anything

Whenever a publication is imminent, consider filing a provisional or nonprovisional patent application before making any publications about your patentable product or service to ensure you don’t unwittingly jeopardize patent protection.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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