Beware of Public Disclosure

The United States patent system is now officially First-to-File.

A new website was brought to my attention of the weekend:  First to Disclose.  The website indicates that it is a “community-powered” site that was created by members of the Brooklyn Law Incubator & Policy Clinic at Brooklyn Law School.  The purpose of the website is stated as follows:

[to] provide[] inventors of all kinds an easy-to-use, fast and effective method by which to publicly disclose their inventions. Under certain circumstances, such disclosures can help secure the inventor’s patent rights.

The site suggests that such disclosure will keep larger inventors or companies from winning the race to the Patent Office by permitting smaller inventors to disclose their inventions on the site.  This disclosure will even start the one year grace period permitted under US law.

As I have previously warned, DO NOT RELY ON THE PUBLIC DISCLOSURE PROVISIONS OF THE AIA.  If you are merely trying to keep another party from getting a patent, then by all means disclose your invention.  If you want to get your own patent, there are simply too many risks associated with public disclosure prior to filing a patent application.

Foreign rights may be irrevocably lost.  This is not a change under the AIA, but should continue to be a significant consideration.  Public disclosure does NOT protect obvious variants of the invention.  If a third party files or discloses an obvious variant of your invention before you file your application, you will not be able to get a patent on the invention.  This point can hardly be stressed enough.

The best advice I can give for the new regime is:  file early and file often.

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2 Responses to “Beware of Public Disclosure”

  1. Provisional Patent Applications | INVENTIVE STEP Says:

    [...] application and later following up with a non-provisional can be a great strategy.  If you need to publicly disclose your invention, file a provisional application for it [...]

  2. Provisional Patent Application | INVENTIVE STEP Says:

    […] and later following up with a non-provisional can be a great strategy.  If you need to publicly disclose your invention, file a provisional application for it […]

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