Founders routinely need to disclose their groundbreaking technologies to third party investors, suitors, collaborators, peers, consultants and others in order to grow and establish their business in their respective markets. Savvy executives understand that disclosing or commercializing an invention before a patent application is filed can have detrimental, even fatal, effect on the ability to obtain patent protection.
So how do you walk this tightrope of attracting support and growing your business while ensuring your core technology is protected?
Obtaining a non-disclosure agreement (“NDA”) from third parties is always advisable if you anticipate you may provide details relating to your confidential technology to such third parties.
In the context of patent protection, NDAs are designed to help keep information relating to your invention non-public so as not to trigger the patent law’s draconian disclosure rules risking invalidity. However, NDAs are not foolproof and can have narrow scope, short sunset clauses, enforceability limitations, and other issues. Accordingly, the touchstone to ensuring your technology is protected is to file for patent protection as early as possible.
Keeping the above and other considerations in mind, following are 3 key considerations to take into account to ensure your technology is protected while you promote and seek support for your business.
1. First, Some Homework: Understand Key Disclosure Rules Under Patent Law
Under the patent law, if you disclose your technology to third parties without first having filed for patent protection, such disclosures could preclude you from being granted patent rights or invalidate your patent rights post-grant.
Many non-confidential disclosures can be invalidating under the patent law, including, but not limited to, describing your technology in a published article, a press release or news story you are quoted in, a posting on your company’s website, a conference presentation, and other disclosures.
Fortunately, in the United States, innovators are given a one year “grace period” from the date of disclosure to file a patent application and preserve their rights in the U.S.; however this grace period should not be relied upon as company policy particularly if your company plans to file for protection outside of the U.S.
Indeed, patent law is territorial, meaning each country has a different set of patent laws that will apply in each such country, without deference to laws of other countries. With respect to disclosure laws, for example, some European countries are “absolute novelty” countries meaning they do not have a grace period and do not recognize the U.S. grace period, and some other countries have grace periods that are shorter than the U.S.’s grace period.
In the event a disclosure relating to your technology runs afoul of any of these rules and results in the unintended and complete loss of patent rights in a given country, such a result may not be entirely desirable to your company or its stakeholders. Such a result is, however, also entirely preventable by setting proper policy up front.
2. File a Provisional Application as Early as Possible, and Cover Improvements Going Forward
One reliable way to preserve patent protection for your technology is to file a provisional patent application on the technology before disclosing the subject matter to third parties. Although you can also file a so called “non-provisional” application, which is immediately put into the PTO system for examination, companies often prefer to first file provisional applications to allow for fast early filing and the ability to add improvements as development continues without having the application queued for examination.
A provisional application helps establish priority to what is disclosed in the application and provides a one-year window (totally distinct from the one-year grace period described above) to effectively amend the disclosure via the filing of additional provisional applications disclosing improvements that occur over the course of that year. Once the one-year period concludes, you may be in a better position to file a non-provisional application that claims priority to the one or more provisional applications that were filed over preceding last year. This approach can be useful for a wide array of technologies that are in the developmental stage.
3. Include a Detailed Description and a Broad Range of Embodiments in the Application(s)
It is advisable from both patentability and disclosure perspective to fully describe each feature of the invention in detail including size, material, shape, and position in relation to one another. For example, in the case of an application directed to a product, one way to ensure every feature is properly included in the application is to provide a wide variety of views of each embodiment of your product including through detailed drawings.
This approach ensures that each aspect of the technology is set forth in the application from which you can later draw claims and mitigates the risk that a later disclosure will cover aspects of the technology that may not have been included in an application that was drafted with less detail.
The above provides a general overview of key considerations in protecting your technology while leading your company through its early growth cycle. You should consult with your counsel early on and in advance of your planned activities to ensure you properly navigate such critical disclosure issues.
Disclaimer: The information contained in this posting does not, and is not intended to, constitute legal advice or express any opinion to be relied up legally, for investment purposes or otherwise. If you would like to obtain legal advice relating to the subject matter addressed in this posting, please consult with us or your attorney. The information in this post is also based upon publicly available information, presents opinions, and does not represent in any way whatsoever the opinions or official positions of the entities or individuals referenced herein.