Patent attorney tricks – Why you should keep your invention confidential

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  • Mike Biagio - Senior Associate, Patent Attorney
  • Senior Associate, Patent Attorney "Getting off the bus two or three stops before your destination can often mean more legwork than you anticipated. I get satisfaction from seeing mining & mechanical engineering ideas come to commercial fruition beyond simply being protected by a patent."

Don’t destroy the novelty of your invention

As anyone who has been through the patenting process will tell you, it is really important to maintain the confidentiality of your invention, at least until you have a priority date for your patent application. This is because you can ‘destroy the novelty’ of your invention if you make a public disclosure or sell it before filing a patent application for it – and destroying the novelty of your invention renders it unpatentable.

Having said that, you may still be able to rely on ‘grace period’ provisions to get patent protection in certain countries. Please feel free to give one of our patent attorneys a call if you think this might apply to you.

Even once your provisional patent application is filed, it is really important to keep any improvements you make to your invention confidential until they have been disclosed in a patent application with a filing date.

But what many people do not realise is that it can be really useful to keep your invention confidential for as long as possible, even after you have filed a patent application.

There are a few reasons for this:

Don’t give competitors a “heads up”

The first and most obvious reason why you would want to keep your invention confidential, even after you file your patent application, is simply so that you don’t give your competitors an early indication of what your invention is. If they don’t see your product until it hits the shelves it will take them longer to develop a competing product, which will increase your first-to-market advantage.

Refiling your provisional patent application

A second reason for keeping your invention confidential during the 12 months after filing your provisional patent application is that it will leave you free to withdraw your application and refile it for a new priority date. By doing this, you can start the entire process again, buying yourself another 12 months.

If you have publicly disclosed or sold your invention during that first 12 months, then you cannot do this. This is because your new priority date will be later than the date of the first public disclosure or sale of your invention (which will destroy the novelty of your invention at the new priority date, and render it unpatentable). For this reason, it is really important to keep a record of when you made your first sale or public disclosure of your invention.

There are risks associated with this strategy. If you give up your earliest priority date and obtain a new, later priority date, you run the risk that a third party has made a public disclosure of the same invention, or filed their own patent application for it, during that first 12 months.

Dropping your claim to priority after filing your PCT patent application

There’s a third reason why it can be useful to keep your invention confidential during the first 12 months. This applies if you have filed a PCT patent application claiming priority from your earliest provisional patent application, and your patent application is nearing the deadline for filing national phase patent applications. As the national phase filing deadline approaches you may simply not have sufficient funds, or might still be uncertain of which countries you want to file patent applications in.

In these circumstances it is possible to withdraw your claim to priority to your earliest provisional patent application. If you do this, the earliest priority date for your application then becomes the filing date of your PCT patent application, which is (typically) 12 months later than the provisional application. The cost of this procedure is relatively negligible.

The deadline for filing national phase patent applications is calculated from the earliest priority date.   This means that you will have essentially given yourself an additional 12 months in which to generate revenues from your invention before having to file national phase applications.

You can only do this if you have not made a public disclosure or sale of your invention by the filing date of your PCT patent application. Once again, there will also be the risk of a third party having made a public disclosure or file their own patent application for the same invention earlier than the filing date of your PCT.

Of course we are not recommending that you should hold back on commercialising your idea if your customers are champing at the bit to get it. But if the timing of commercial release or the first marketing brochures is not going to make a huge difference to the commercialisation of your idea, then you can gain some useful benefits by being careful and not making your first public disclosure until after you file your PCT patent application.

If you have any questions about this, please contact one of our patent attorneys. We will be happy to guide you through this or explain it in more detail.