File before you disclose is still the way to do it

07 October 2011

The Leahy-Smith America Invents Act, signed into law by President Obama on 16 September 2011, introduces many legislative changes to the US patent system, one of the more significant being that the US will be implementing a "first-to-file" system in place of the present "first-to-invent" system. However, the US "first-to-file" system is not the same as "first-to-file" systems in place elsewhere.

The new US system will retain a one year inventor disclosure grace period. In summary, any disclosures made by the inventor will not be considered to be prior art for a subsequent patent application made by that inventor providing that the patent application is filed less than one year after the disclosure(s). Additionally, it appears that disclosures made independently by third parties in the period between the inventor's disclosure and the filing date of the application, or patent applications filed by a third party during this period, will not be considered to be prior art against the patent application. Some have in consequence dubbed the new US system a "first to publish" system.

Provisions for such a grace period do not exist in most other territories. At the European Patent Office (EPO), for example, only disclosures due to, or in consequence of, (i) an evident abuse in relation to the applicant or his legal predecessor, or (ii) the applicant or his legal predecessor displaying the invention at an officially recognised international exhibition, are considered to be non-prejudicial disclosures, providing they occur within a 6-month period preceding the filing of the application.

Therefore although, in the US, it may still not be detrimental to publish your invention prior to filing a patent application, such publication remains highly likely to destroy any chance of gaining patent protection in most other territories, for example at the EPO.

We recommend speaking to your patent attorney before you consider disclosing any information in relation to your invention.

Your usual advisor at Potter Clarkson LLP will be able to help with any enquiries.

Back to all updates