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Should you keep your invention confidential after filing a patent application?
Chris Baxter
Chris Baxter

Once you have filed your first patent application, it will be given a priority date on the date that your patent application was filed. This priority date is important because later on during the patent application process, your invention is compared to “prior art” in order to establish whether or not your invention meets the requirements of being novel and inventive over this prior art. If the prior art shows your invention or something so similar as to render your invention obvious, then your patent application will be invalid.

The prior art includes all subject matter that has been put into the public domain anywhere in the world, by any means, before the earliest filing date of your patent application. The prior art could include patent publications, marketing brochures, websites, or any other public disclosure. Any subject matter disclosed publicly after the priority date is no longer counted as prior art.

If you make a public disclosure of your own invention before the priority date, then your own disclosure will become part of the prior art, and potentially invalidate your patent application. This is why it’s really important to keep your invention confidential, and not use it commercially (even secretly) until you have filed your patent application.

But what happens after you file your patent application?

In theory, you will be covered as nobody else will be able to go back in time and file a patent application earlier than you, and if anybody else starts commercialising the same invention, this public disclosure will not have an effect on the validity of your future patent. Further, if there is a potential infringement of your patent, it is possible to expedite the examination of your patent application to get it granted as soon as possible. Once the patent is granted, you can stop others from commercialising the same invention.

Even though you have these protections, we typically recommend that you try to maintain the confidentiality of your invention for as long as possible – but without delaying the commercialisation of your invention. There are a few reasons for this.

Firstly, you do not want to let your potential competitors know what you are planning ahead of time. It would be better for them to only find out what competition they will have once it hits the shelves. In this way, you can engineer a time delay between when they find out about your products, and when they can do something about it.

Another good reason to keep your invention confidential for as long as possible is because of the way the patent process works. Typically, milestones for carrying out certain actions are calculated from the earliest priority date. One of the major milestones is for the completion of your patent application is at 12 months after filing your provisional patent application.

As a provisional patent application is kept confidential, the filing of your provisional patent application will not result in the public disclosure of your invention. If the 12-month deadline is looming, and funds are scarce, and you require more time in which to commercialise your invention, then it may be possible to re-file your provisional patent application to restart the entire timeline from the beginning.

However, this is only possible if you have maintained the confidentiality of your invention since the provisional patent application was filed. If you have made a public disclosure or commercial use of the invention in the intervening time period since the earliest priority date, then the date of public disclosure will be earlier than your new priority date, thereby potentially invalidating your future patent in some countries.

If you have maintained the confidentiality of your invention during the first 12 months, for example by having everybody concerned sign non-disclosure agreements, then the re-filing of your provisional patent application is possible. Of course, you still take the risk that somebody else might have filed a patent application to the same invention during this time period, or somebody else might have made a public disclosure of a similar invention during this time period, which could affect the rights that you are able to get for your invention.

There are additional benefits to keeping your invention confidential, at least during the first 12 months after the earliest priority date, but the explanation of these will be too technical for this article.

If you have any questions about maintaining confidentiality of your invention, please feel free to call up one of our patent attorneys.

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About the author
Chris Baxter
Managing Director, Patent & Trade Mark Attorney
Chris Baxter is a Sydney patent and trade mark attorney specialising in software patents, computer patents, medical device patents and engineering patents.

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