Publicizing Your Invention

Question: I just filed my patent application. Is it OK to tell people now about my invention?

Disclaimer:The answer below is a discussion of typical practices and is not to be construed as legal advice of any kind. Readers are encouraged to consult with qualified counsel to answer their personal legal questions.

Answer: This is a tough one. Once a patent application is on file, an inventor will theoretically be protected from unauthorized copying when his or her patent issues (assuming it does). This presumes, however, that a patent will issue quickly, that no one else has made the same invention earlier, and that all patentable aspects of the invention are disclosed and claimed. Failure in any of these areas can leave an inventor exposed to copying by those that might learn about his or her invention.

Details: For example, if the inventor has not realized all of the patentable aspects of his or her invention and incorporated them into the patent application, disclosing it publicly might provide someone else with an immediate opportunity to recognize and file a patent application on improvements. Delaying a public disclosure of an invention as long as possible will allow the original inventor time to work with and develop the invention and the opportunity to discover the improvements others may otherwise recognize.

Since March 15, 2001 most US patent applications are published 18 months after they are filed. They then become available to anyone with an interest in looking for them on the USPTO web site or other publication sites. An inventor can postpone the publication of a patent application and, therefore, keep it secret until a patent is actually issued, by agreeing that the patent application is not going to be filed in any other country.

Some inventors do elect to keep their inventions secret until a patent issues. The classic case of this was the Wright brothers. They filed their patent application before their success at Kitty Hawk. After their first powered flights, they shipped their flying machine back to Dayton. There they continued to develop it in secret until they had a commercially viable aircraft. Once they were done with development, they took the plane apart and hid it until their patent issued.

The patent took three years to get approved. For three years the Wright brothers refused to show their plane in public. No one could figure out what their secret was. Once their patent issued, however, they put on a public demonstration and began selling it. When the inevitable copying occurred, they sued the infringers and won (at least in the US).

Most inventors need to move faster than the Wright brothers. To protect against copying while their patents are pending, they often will put a "non disclosure agreement" (NDA) in place with someone they want to tell their secrets to. An NDA is a contract between a disclosing party and a receiving party. The disclosing party agrees to disclose confidential information to the receiving party, but only for a particular purpose. An inventor, for example, might agree to disclose confidential information about an invention to a potential licensee for the purpose of negotiating a licensing agreement. The receiving party agrees to keep the information secret and to not use it for any other purpose. If the receiving party fails to honor the agreement, then the disclosing party may sue for damages.

Inventors are often concerned about disclosing the secrets of their inventions while their patents are pending. Some, like the Wright brothers, keep their secrets. Others rely on nondisclosure agreements to protect their secrets from widespread dissemination. NDAs help inventors commercialize their inventions faster by allowing confidential licensing negotiations to take place.