Jared Sues and Maddie Lynch
October 25, 2021
As a founder, it’s crucial that you understand and capitalize on the value of your product or service. Intellectual Property (IP) is an intangible asset that identifies and protects your business, separates you from the herd, and allows you to enter and control a share of the market.
This article is the last in a 5-part series on protecting your intellectual property. ventureLAB’s experts cover everything you need to know before you file for IP protection. Check out other parts in the series:
Given how rare new ideas are, it’s exciting coming up with one. The euphoria only increases when colleagues, investors, or academics show interest. Still, you must exercise care before providing others with an understanding of how your idea works. Disclosing details can not only create competitors capable of commercializing your idea, but can also prevent you from obtaining a patent.
A patent is a bargain between you (the inventor) and the government. In exchange for providing the public with the details of your invention the government provides you a 20-year exclusive monopoly to practice your invention in the form of a patent.
From the government’s perspective, this bargain loses its appeal if you have already disclosed how to practice or use the invention. This is why patents have a novelty requirement. If information on how to realize your invention is already publicly known, there is no benefit to providing the monopoly. The only way to meet the novelty requirement is that there must be no prior art describing the invention. In the context of patents, prior art refers to the body of information in the technical field of the invention that is already available to the public. While there are many forms of prior art, such as academic journal articles and other patents, a public enabling disclosure (made by you, the inventor) can also be considered prior art.
Disclosure only becomes prior art if it is public and enabling.
The term can be interpreted liberally. Public does not imply quantity, nor does it imply the public actually obtained the information. Rather, it means that any member of the public could have accessed the details of your invention. A public disclosure may include a scribble on a napkin, shoved in a book in the children’s section of the Oxford Public Library. A public disclosure may also include pitching your idea to investors, or presenting at an internal seminar. Indeed, ‘public’ has a wide interpretation and is not restricted to the common general public.
An enabling disclosure is one that allows a skilled person (i.e. an expert in the field of the invention, such as a scientist or an engineer) to understand how to practice the invention. This could be done verbally, on paper, or even demonstrated in the form of a prototype that can be reverse engineered. This requirement is more about how an invention works rather than what it does. This means that enough information must be disclosed in order to recreate the invention. For instance, if you were the inventor of the wheel and you demonstrated your wheel in a public square, another skilled person could witness the demonstration and be able to recreate your wheel based on what they saw. This relatively low bar on the interpretation of enablement makes relying on this intricacy to permit disclosure inadvisable.
Sometimes disclosure is necessary before you are ready to file a patent. This can often be the case when commercializing an invention, as disclosure to investors may be required to obtain the money for filing or even assigning ownership of the future patent. Perhaps you don’t have a specific investor in mind, but want to issue a press release in order to attract potential investors. All of these are valid business considerations, but this type of disclosure should be done under the guidance of a patent professional who can minimize the risk of disclosure becoming damaging prior art. There are, however, other methods of disclosure such as disclosing aspects of the invention that already exist in the prior art which may be considered acceptable.
Alternatively, making a disclosure private, i.e. not public, can be accomplished through an appropriately tailored nondisclosure agreement (NDA), agreed to by the recipient of the disclosure. One caution is that this method of privatization only works if it is adhered to. If breached, the disclosure becomes public and can thwart your patent application. If this happens, there may be no patent-related recourse for the inventor. Instead, an NDA is a contract and thus the inventor could sue for breaching the terms of the NDA. Therefore, it is important to only disclose when necessary and be sure any disclosure is protected.
Typically, an inventor will differentiate their invention from prior art. With enabling public disclosure, this is not possible as the disclosure directly describes the invention.
So, is it a lost cause? While this may be an issue in much of Europe, many countries have a grace period. In Canada and the US, disclosure made by an inventor up to 12 months prior to filing is not considered prior art, although it would be if patenting is attempted in a country without such a grace period. Other countries like Germany have more restrictive parameters such as a 6 month grace period. Regardless, it is important to document any potential disclosure and speak to your patent professional about what it may mean for your application. The chart below is a guideline for tracking any disclosements.
(File location of presentation)
ventureLAB can help you navigate your IP strategy. Located at the heart of Ontario’s innovation corridor in York Region, ventureLAB is a leading global founder community for hardware technology and enterprise software companies in Canada. Our initiatives focused on raising capital, talent retention, commercializing technology and IP, and customer acquisition have enabled thousands of companies to create over 4,000 jobs and raise more than $200 million in investment capital. Join us.
Jared Sues joins ventureLAB as a law student at Osgoode Hall Law School where he serves as an IP Osgoode Innovation Clinic Coordinator and focuses his studies in intellectual property. Prior to law school Jared practiced as an engineer for 9 years in Canada and the US. Most recently, he summered at OWN Innovation, an IP law firm, and looks forward to helping the next generation of innovators with their IP strategic needs.
Maddie Lynch is an IP Intern from Osgoode Hall Law School where her studies focus on intellectual property. At Osgoode Maddie is part of the IP Osgoode Innovation Clinic helping inventors with the early stages of patents and trademarks. Prior to law school Maddie obtained a PhD in Neuroscience, working in an Alzheimer’s disease therapeutics lab. Most recently, she summered at Bereskin & Parr LLP, an IP law firm and looks forward to continuing her education in intellectual property law.