I was asked the following question recently:
I have a great new idea. I would like to gauge interest by publicly describing what my new product does. I am concerned, of course, that this may be a problem patent-wise. Does it matter if my disclosure does not tell how my product works, just what it does?
The short answer is yes. You can share too much about your invention, and it will result in what you’ve shared becoming part of the “prior art,” meaning it already exists. The U.S. Patent and Trademark Office (USPTO), will not grant you a patent for anything that is in the prior art, even for prior art you created. You can prevent your disclosure from becoming prior art by drafting your disclosure so that it (1) fails to disclose “all elements” of your invention and (2) does not “enable a person of ordinary skill in the art to make the claimed invention.” Typically, this can be accomplished by focusing on what the new product does – rather than how it works.
But the better answer is to recognize that the question is a red herring. It is almost never a good idea to publicly disclose anything about your invention without filing a patent application first. Rather than wasting time and money worrying about how much to disclose in a pre-filing publication, you should sidestep this issue altogether by filing a suitable provisional patent application before publicly disclosing anything about your invention.
For one thing, even if you were to carefully craft your public disclosure correctly, you can be sure that when your new invention starts selling like hotcakes, a copycat defendant will raise your pre-filing disclosure when trying to avoid your claim of patent infringement. The defendant will claim that your pre-filing disclosure was enough to invalidate your later patent claims. When this happens, it will cost a comparative fortune to prove your public disclosure was “non-enabling” rather than filing a suitable provisional application prior to disclosure.
For another, even though it is possible to craft a public disclosure that would allow you to gauge public interest without directly affecting your chances of getting a patent, any pre-filing disclosure can spring hidden traps that can eviscerate your patent rights. For example, even if your disclosure successfully avoids the prior art standard noted above, your pre-filing disclosure inherently runs the risk of spurring someone else to come up with the same solution you did. And if they do so independently (which would necessarily be the case if your disclosure is “non-enabling”) and file a patent before you do, their patent filing will be senior to yours and block you from getting related claims to your invention, even though you were first to invent. In this way, your public disclosure can indirectly undermine your chances even though you correctly crafted it to avoid it being prior art.
Even though it is possible to craft a public disclosure that will not be considered prior art, any pre-patent-filing disclosure is risky in this “first-to-file” patent world.
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Post by patent attorney Joseph Meaney, edited by social media attorney Ruth Carter.