Be clear about the benefits that patent protection can bring. Essentially, a patent is a bargain between an inventor and the state, which gives the inventor a monopoly in a chosen marketplace and allows their invention to be protected and maintained. Filing a patent with the Intellectual Property Office costs between £230 - £280, although taking on a patent lawyer to check your claim will create an additional overhead. Disclosing the finer details of an invention before protection is granted would almost certainly invalidate this position.
What is early disclosure?
Early disclosure can be defined as any activity that makes an invention available ahead of applying for patent protection or subsequently launching it to market. Early disclosure ranges from advertising and sales to talking to potential customers or manufacturers without a confidentiality agreement in place.
The parameters of what can and can’t be discussed need to be clearly defined. Entrepreneurs should feel at liberty to discuss the benefits of an invention but the process that creates these should be closely guarded. In other words, the components of an invention that allow a business to maintain its leading market position should remain confidential until adequate protection is in place.
It’s a small world
The rules on early disclosure vary in different countries. In the UK, disclosing ideas or inventions ahead of gaining patent protection requires formal agreement that the information will be treated as confidential. In the US, however, inventors have a twelve-month ‘grace period’, during which they are at liberty to disclose details before seeking patent protection. In the age of the internet, entrepreneurs who may well be considering marketing their invention internationally may not be aware of these geographical differences. In addition, non-UK inventors may benefit from a period of grace in their home country. However, as early disclosure is only permitted in their immediate domestic market, this would invalidate efforts to patent a product in markets where such early disclosure is prohibited.
Know the limits
It is important to note that confidentiality agreements have limitations, and should always be properly drafted. There have been instances where inventors have focused on one specific product but, because the agreement didn’t cover other secondary inventions, they were left open to risk. It is natural for entrepreneurs to approach such matters with enthusiasm but it is vital that all inventions are appropriately safeguarded. Finally, it is important to clarify that a confidentiality agreement only gives entrepreneurs a right to sue in the case of the breach, and does not establish protection for an invention in its own right.
John Dean is a partner and patent attorney at patent and trade mark firm Withers & Rogers.