Under the March 2013 implementation of the America Invents Act (AIA), there exist greater risks to inventors to accidentally disclose their inventions through their very own actions. Specifically, under the new 35 U.S.C. 102(a)(1), a person is entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. While this new change in the patent laws is designed to make obtaining a patent application more straight forward – the true result creates a roadblock to patenting for small companies, entrepreneurs and sole inventors, while rewarding large corporations and established technology companies.
For example, under the new law, if the underlying technology is not disclosed, but is publicly used (such as at a trade show) just a day prior to filing of the underlying patent application – this may act as a bar to patenting (even though there is no disclosure of how the underlying technology works). Likewise, a public sale of the underlying technology (without disclosure of how it works) prior to a patent filing also may act as an absolute bar.
To make matters even more aggravating, although the act maintains a one-year grace period, the grace period protection is not available for most forms of publication by third-parties. Accordingly, the grace period is only personal to the inventor and offers limited protection under the new AIA. Thus, by giving a printed publication to someone, which is then republished by that third-party prior to filing the underlying application, would not fall into the one-year grace period of 35 USC 102(b).
Unlike in the previous rules of public disclosure – it use to be that a public disclosure of a technology outside of the United States, would not act as a bar to patentability. This is no longer the case. If the inventor publicly discloses the invention (even outside the United States), that too may act as a bar to patentability.
Based upon the foregoing, it has become imperative under the AIA for inventors to maintain even stricter confidentiality regarding their inventions prior to filing either a provisional or non-provisional utility patent application. This is especially true before an inventor displays an invention, or desires to showcase a printed publication of that invention. Such confidentiality restrictions must be firm and restrict the party receiving such information that they are not allowed to disseminate any form of written material that includes such information. These confidentiality provisions must be used when disclosing an invention both domestically and outside of the United States.
Our team of Miami Patent Attorneys recommend that inventors, prior to filing a patent application, always use a confidentiality agreement (also referred to as a NDA or non-disclosure agreement), that includes the following:
- accurate recitals regarding the general description of the underlying technology;
- a robust definition of what constitutes confidential information
- a specific prohibition that restricts publication of a printed publication obtained by the disclosing party;
- a duty to destroy or return written material if asked for by the disclosing party;
- the right for injunctive relief; and
- a choice of law provision within the United States.