Invention disclosure: What happens if you disclose an invention before filing a patent?

By Adrien Metivet,
Disclosure_Word from Metal Blocks on Paper

Disclosing an invention before filing a patent, whether by accident or design, may lead to any subsequent patent application being rejected. Adrien Metivet sets out the dangers and consequences of uncontrolled invention disclosure

Once an invention is detected by a company or a research laboratory, it is very important to ensure that it does not become accessible to the public before a patent application is filed. Prior invention disclosure, even if accidental, may lead to the rejection of the patent application, or at least strongly impact it by forcing withdrawal of the elements disclosed.

Consequences of early invention disclosure on patent scope

Two examples in the case law of the European Patent Office (EPO) illustrate this point well.

In decision T 0582/18, the Boards of Appeal of the EPO discussed whether or not a Master's thesis (called document D2) had been made available to the public before the patent priority date and, if so, whether said document was thus part of the state of the art.

The Master's thesis in question bore the date ‘June 2011’, i.e. one year and one month before the priority date of the patent (July 2012). Because of the content of D2, the question of its availability before the priority date was crucial, therefore, to the validity of the patent.

The Board concluded that the document in question had been made available to the public in a database, a situation confirmed by the fact that the document was cited in a later publication from May 2012.

As this Master's thesis disclosed all the features contained in claim 1 of the patent, the subject matter of the latter was therefore not new. The patent was maintained, but in a modified form, meaning the scope of the patent was strongly impacted by this disclosure.

The consequence of early invention disclosure on a patent application

In decision T 1024/18, the Boards of Appeal of the EPO discussed the accessibility to the public of a production line, following its sale. 

The Board stated that, according to settled case law, the sale of a device is (in the absence of special circumstances limiting the freedom of disclosure of its details) sufficient to make the technical details of the device available to the public.

There was no proof of confidentiality, even tacit, for the sale of the production line in 2009, which would have prevented the buyer from freely disclosing the details of the said production line to a third party. This constitutes a disclosure to the public before the patent priority date, therefore.

In the present case, a witness further testified during opposition proceedings that visitors had been admitted to the production line at the buyer's premises without having to sign a confidentiality agreement. The buyer was free to disclose the production line to whomever it wished, according to the Board.

By disclosing the invention covered by the patent, that patent was declared to be devoid of novelty and eventually revoked.

Protecting innovation from early invention disclosure

These two examples provide two important reminders for innovators to a) ensure that anyone with knowledge of an invention is bound by confidentiality and b) that the filing of the patent application should be prioritised before communicating or marketing the invention.

To avoid the risks of accidental invention disclosure, it is advisable to consider filing the patent application as soon as the main technical elements are more or less fixed. For further advice or support on this topic, speak to your Novagraaf attorney or contact us below. 

Adrien Metivet is a French & European Patent Attorney based in Novagraaf’s Paris office.

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