I am often asked, when is it safe to tell people about my invention? Along with, who can I tell? What is to stop them from stealing my ideas? How can I raise funds or market interest if I can’t tell people about my invention? And, can I still patent my invention after I’ve told people about it?
These are legitimate questions, and are particularly relevant to technical innovation. If you have had an idea that provides a solution to a technical problem, or offers some sort of technical advantage or has a novel technical feature over what has been done before, then you may, ultimately, want to secure patent protection to stop others from copying your ideas. BUT you can only obtain valid patent protection if you have filed a patent application before there has been any non-confidential disclosure of the innovation.
This means that, ideally, you should file a patent application for your invention before you tell anyone about it. And, if you have already taken the idea beyond the concept stages, and you are certain of how the invention will be put into practice, that might be the optimum solution.
However, there are many circumstances, especially when raising funds or collecting information to get a project off the ground, when you might need to tell people about it before you are ready to file a patent application. So, what can you do?
Confidentiality or Non-Disclosure Agreements (NDAs)
If you need to disclose your invention to a small number of reputable business or people, then you can use an NDA. An NDA is a contract between you and another party that stipulates that you will be disclosing confidential information to them, and sets out how, and for what purpose, that confidential information can be used. There are lots of NDA templates available on-line that you can use, for example: https://www.gov.uk/government/publications/non-disclosure-agreements.
There are, essentially, two types of NDA: a one-way NDA places only the party receiving the confidential information under the stipulated confidentiality obligations, whereas a two-way NDA places both parties under the same confidentiality obligations.
Whilst NDAs are hugely useful, and widely used, especially for early stage business, it is highly advisable to use them sparingly – try to stick to reputable businesses and people, and keep a record of what was disclosed and to whom, because if there is a breach and you want to take legal action, you need to know who to take such action against. If you have lots of NDAs in place with lots of different people, that might not prove entirely straightforward! It is also worth noting that if you sell someone a product, even under NDA, it is highly likely to count as a non-confidential disclosure from a patent perspective, irrespective of the terms of the sale, so this does not offer an opportunity to start generating a bit of revenue before you file a patent application!
Initial Patent Application
There are, however, many circumstances in which an NDA simply will not suffice, or is not appropriate. For example you may want to raise funds via a crowdfunding campaign, or you may want to take pre-orders to generate revenue. None of these activities can feasibly be performed under NDA.
Instead, you may want to consider filing an initial patent application, covering your idea in its current form, which would leave you free to disclose the idea to the extent that it is described in the initial patent application. You can then file a second, “top-up” application by the end of 12 months later, to cover any further developments arising during the preceding year The top-up application can “keep” the date of the initial patent application (provided it is filed within 12 months), but only to the extent of what the initial patent application disclosed. In other words, the top-up application still needs to be filed before there is any non-confidential disclosure of further detail that was not included in the initial patent application.
Again, while hugely useful, there are a couple of disadvantages to using this route. Firstly, it inevitably increases the patent costs compared with what they would have been if you had only had to file a single patent application. Also, filing the initial patent application starts this 12-month “clock” ticking, which puts your business under a bit of pressure to ensure that as much development as possible of the innovation takes place during this limited time window, especially considering that the deadline for filing any corresponding overseas patent applications also falls 12 months from the date of filing the initial patent application.
That said, the advantages include an early date, leaving you free to disclose limited details of your invention, and also the possibility of an early patentability search, so that you will be better informed f your likelihood of, ultimately, successfully securing patent protection for your invention.
Disclosing only “teasers”
You my just want to test market interest using “teasers”, without actually giving away details of your invention. Disclosure, for the purposes of assessing the validity of a patent, must be “enabling”. This means that the disclosure must be in enough detail for a third party to be able to recreate a version of the invention using what is disclosed by you and any additional knowledge they may have (gained from experience and/or other publicly-available information). So, whilst “teasers” are a possibility in some cases, you do need to be very careful. For some innovation, where the technology or features that make it work are well hidden and not readily discernible from a description of what it does, this might be possible. In others, it simply isn’t possible to publish a teaser without giving the game away. We would strongly recommend that you consult a patent attorney before taking this step or, indeed, making any non-confidential disclosure of your invention.
Need Help?
If you need help with this, or any other, IP issue, please book a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https://strachanip.co.uk/contact/
Note: the above narrative is provided for information purposes only, and is not intended to constitute formal legal advice. If specific such legal advice is needed, please contact a Chartered Patent Attorney.
