Loose Lips Might Sink IP Ships

• Published date: 25 May 2021
• Subject Matter: Intellectual Property, Patent, Trade Secrets
• Law Firm: J A Kemp LLP
• Author: Kapil Tuladhar

You have just come up with a new and exciting invention. Understandably, you are keen to disclose your invention - perhaps to a potential investor or external collaborator. However, disclosing your invention in the wrong way, at the wrong time, or to the wrong person, may prevent you from being able to effectively commercialise your invention. In particular, you may find that you are unable to obtain useful patent protection for your invention. So it is important to understand how the inevitable tension between disclosing and patenting your invention can be effectively managed.

Two of the fundamental requirements to get a patent for an invention are that the invention is novel and inventive over the prior art. The prior art is generally everything that has been made available to the public before the filing date of a patent application, and includes written disclosures, oral disclosures, and physical products that have been accessible in the public domain. So, if you know that you want to protect your invention through the patent system, it is important to ensure that there is no public disclosure of your invention until you have filed your patent application. Even after filing a first patent application to your invention, there may still be advantages to controlling the disclosure of your invention (for example until a priority-claiming application is filed and/or your patent application publishes).

Of course, it is likely that there are people to whom you will need to disclose your invention before filing a patent application, such as colleagues, your patent attorney, and select external third parties. Here, it is important to make sure any disclosure is confidential so that it does not harm a future patent application. Generally, your colleagues will be bound by confidentiality by virtue of their employment contract, and your patent attorney by virtue of their professional obligations. Disclosure to external third parties though can be problematic, given that as a default they will not be bound by confidentiality.

If you do need to disclose your invention to an external third party before filing a patent application, such as a potential investor or collaborator, it would be prudent to have in place an appropriate non-disclosure agreement (basic non-disclosure agreements can be found here). This is true even if you trust the third party because interests can diverge - ensuring that such agreements are in place may even reassure third parties by showing...