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Shhhh… don’t mention the patent

September 27, 2019, By

When people think of intellectual property protection often the first thing that pops into their mind is a patent (and then the question of how it’s pronounced). But patents can be hard to come by, with a very high bar for what’s considered to be an “inventive step” and often fairly substantial legal fees to get the thing drafted.

However, what a lot of people fail to realise is that secrecy is the key to filing a patent application and if your invention has already been publicly disclosed (such as at trade show, as part of a funding pitch or just on social media) then it’s likely that the disclosure will be considered to be “prior art” and void any subsequent application. Basically, the rule is that a patent must be completely novel and so if it’s already in the public domain, it will fall at the first hurdle.

So what to do… well, fortunately we have a very useful concept called confidential information. If your invention is kept confidential then it will not be in the public domain and it will not count as prior art. The best way to do this, if you have to disclose your invention before applying for a patent, is to ensure that anyone you disclose it to first signs a non-disclosure agreement (normally referred to as an NDA).

An NDA is essentially an agreement between two or more parties that a secret, when disclosed, will be kept secret. If a party breaches this agreement by letting the cat out of the bag, then the other party will be able to make a claim for breach of contract. Which, in so far as legal claims go, is normally quite straightforward.

Of course, once the secret has been disclosed then it’s no longer secret, meaning that it would still count as prior art even if you didn’t want it to. On that basis a lot of care needs to be taken when disclosing confidential information and it’s best to only do this if you have to (even if you’re confident that you have a properly drafted NDA in place).

So, mum’s the word, at least until your patent applicant has been filed.

For more information on patent application and confidential information, why not have a secret chat with one of our very discreet solicitors? Just email [email protected] to book in a consultation.

Written by Will Miles, Solicitor

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