Overview of Public Disclosure
Patent law places a fairly low threshold on what is considered a public disclosure. Although you can disclose some information about an invention (you can describe an invention without giving details), almost any disclosure without limitation or obligation of secrecy may constitute a public disclosure.
The disclosures that will ultimately act as a bar to patentability must be "enabling"--that is, it must give enough information to someone "of ordinary skill in the art" to actually duplicate the invention. An invention is considered to be publically disclosed when it falls into one of these four broad categories:
1. It is described in a printed publication
Printed publications include commonly associated items such as book chapters, journal articles, and theses. But printed publications also include:
- Email correspondence: Providing information to individuals outside Northwestern University by email, letters or other correspondence without indicating that the information being provided is confidential could also constitute disclosure.
- Grant proposals: Grant proposals to federal agencies are deemed publications as they are accessible under Freedom of Information Laws, but you can take active steps to ensure that information you provide under grant proposals is maintained in confidence when necessary. The first page of the proposal should carry the following notice: “Confidential Information--Pages __ to __ of THIS PROPOSAL contain potentially patentable information” List the pages containing the confidential information and conspicuously write “CONFIDENTIAL” on each page that contains the confidential information.
- Posters, Abstracts and Proceedings
- Oral disclosures: Oral presentations are a gray area in terms of whether they constitute disclosure or not. If at a formal talk, you distribute a copy of your presentation in which your invention is disclosed, it is clearly a disclosure. However, even if handouts are not provided but someone in the audience takes detailed notes that describe the invention, it would also constitute disclosure. For these reasons you need to carefully plan your oral presentations so that you do not inadvertently disclose your invention. Thus conference presentations, departmental seminars, or thesis defense all present opportunities for public disclosure.
2. It is in public use
Distribution of research materials and prototypes that embody the invention, may constitute disclosure under certain conditions. If the materials are provided without any restriction on use or further distribution it may be considered to be made available to the public. If they are clearly provided only for testing and/or evaluation or for research purposes under written agreements clearly specifying the same, it would not be considered disclosure.
3. It is on sale
A sale or an offer to sell a research material or prototype also constitutes disclosure and could establish a bar date for patent purposes.
4. It is otherwise available to the public
This is a new provision implemented under the American Invents Act on March 16, 2013. As this is a new statutory provision, it is unclear exactly how it will be implemented in practice. This provision may therefore expand the list of public disclosures in yet unforeseen ways.