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The Basics of Disclosure in Intellectual Property

By: Christopher Heer, Annette Latoszewska, Daryna Kutsyna | Last updated: May 7, 2023
The process of taking your invention from an idea to a fully operational business venture can be quite challenging. During this time, you may be inclined to share your idea with potential investors to evaluate its profitability or advertise it through other channels to showcase your ingenuity or check the market potential. However, if you are eventually hoping to protect your rights with a patent or an industrial design registration, you may be endangering your rights by revealing your invention or design to others before you apply for protection.

Under Canadian law, you have one year (twelve months) from the time of the initial (or earliest) public disclosure of your invention to file for a patent or industrial design registration; if that seems stringent, consider that Canada has one of the longest grace periods for disclosure in the world.

Most countries, with many industrialized countries in Europe and Asia included, demand absolute novelty as a requirement for patentability; that is, any evidence of public disclosure may prevent your innovation or new design from obtaining patent or design protection.

This article covers the basics of what constitutes public disclosure, as well as some tips for avoiding unintentional disclosure and choosing the best protection strategy for your patent. It is not an exhaustive list of recommendations though. Please consult an intellectual property lawyer if you require help determining whether something constitutes a public disclosure in Canada or another jurisdiction.

What is disclosure?

To be patentable, an invention in Canada must meet the novelty requirement; that is, an application must be new to the public as of the date it was filed. Because Canada operates on a first-to-file system, rather than a first-to-invent system, it does not matter if someone already came up with the invention you want to patent, if they did not publicly disclose it or file an application in Canada at any time before you. This invention does not need to be entirely new, and can be, for example, an improvement to a previously known item, or a novel method of use of an old product.

However, the novelty of your invention is only maintained if it is not disseminated publicly. In Canada, any public disclosure of the invention that provides information sufficient for an individual skilled in the relevant industry to reproduce the invention (i.e., enabling disclosure) nulls the novelty requirement of patentability. For example, the sale of the invention may meet this definition where the product could be reverse engineered without inventive skill or undue burden. In other countries, such as the United States, a sale may destroy novelty irrespective or whether the disclosure enabled another to make and use the invention.

Any instance of public sharing of the invention – for example, an oral presentation on the product, a written release, a sale of the product or a pitch for crowdfunding – would likely be considered a public disclosure. A patent publication in another country, the publication of the invention in a technical journal and showcasing your invention in professional circles (i.e., at a trade show or exhibit) would also be considered public disclosure. It is therefore necessary to consider novelty searches that cover the entire world, rather than just in your home jurisdiction, to meet the novelty requirement. Any enabling disclosure, anywhere in the world, in any language may present an obstacle to your patent application.

As a result of public disclosure, your invention will lose its novelty and may no longer be eligible for patent or industrial design protection subject to the grace periods which are available in some countries (for example, Canada and the United States, but not Europe or China) during which you are still allowed to obtain a valid patent. If you have already filed a patent application, and your invention was publicly disclosed outside of any applicable grace period, the examiner will issue an examiner’s requisition objecting to your application based on novelty and citing the earlier disclosure. In some jurisdictions, such as the United States, you are obligated to provide details of such earlier disclosures which are material to patentability to the patent office. You may then respond to the examiner’s requisition with comments to distinguish the application from what was disclosed and prove its novelty.

It should be noted that not all instances of telling someone about your invention count as public disclosure for the purposes of the novelty requirement. Sharing your invention with others confidentially to further your business purposes, such as your employees or partners within your business, is not considered to be public, as it is not known in wider circles where information regarding your industry is discussed. If you succeed in keeping your invention confidential, it should comply with the novelty requirements set out in patent laws.

How is disclosure relevant to patent filings?

In Canada and the United States, the allowances for inventor disclosure of patentable inventions are quite lenient when compared to most other countries. You are given a grace period of twelve months from your initial public disclosure of your invention to file a patent or industrial design application. In Canada, you must file a full patent application by the end of the twelve-month period – a provisional patent application filed in the United States is not enough to protect you in cases of an already existing disclosure. An international application under the PCT, however, will meet the requirement of filing within twelve months of initial disclosure – the international application does not have to have entered the national phase in Canada within those twelve months. In the United States, the grace period is calculated with reference to the priority date of the application, not the filing date, so a regular patent application filed more than 12 months after initial disclosure may be allowable where a provisional application was filed within the 12 months and the regular application claims priority from this provisional application.

In Canada, the twelve-month grace period applies to your own public disclosure, as well as disclosure by someone who obtained the information, directly or indirectly, from you. However, filing an application within the twelve-month grace period does not protect you from a third-party disclosure that could inhibit the grant of your patent. If third-party disclosure occurs, even after when you yourself originally publicly released the information, it could put your patent or industrial design application in jeopardy.

It is in your best interest to avoid disclosing information about your invention until after you apply for a patent. Patents are granted on the basis of a first-to-file system, which means a third party that has learned of your invention through your disclosure might also file a patent application in the twelve-month grace period afterward. If they do so before you, you may lose your rights to the patent or be drawn into a costly litigation battle over ownership of the invention where the onus is on you to prove that you were the original inventor.

Although the twelve-month grace period provision also exists in the United States, the rules surrounding disclosure of inventions are somewhat different, including whether the product or service has been offered for sale or sold prior to filing. For example, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential may nonetheless render the invention unpatentable for lack of novelty.

Just as your public disclosure can prevent you from acquiring a patent if you do not file an application within the relevant time, it can act as a defence mechanism against someone who tries to obtain a patent for your invention in another country or in the United States.

In many other jurisdictions, the requirements for novelty, and, as such, for avoidance of prior disclosure, are much more stringent. In many countries in Europe and Asia, the requirement for patentability is absolute novelty, which means that any sort of public disclosure acts a complete bar to patentability. You can find more information on specific laws of each country on the World Intellectual Property Organization (WIPO) website.

Accordingly, it is generally not advisable to publicly disclose your invention before filing a patent application in any jurisdiction. It violates the novelty requirement in some states, which could inhibit you if you ever plan on globalizing your invention, and it puts you at risk of other individuals trying to claim your invention as their own. Although the grace period is a useful tool in circumstances where you stand to gain from disclosure or where disclosure is inevitable or inadvertent, it is by no means a guarantee that no other complications will arise.

Tips for preventing unintentional disclosure

Although you are never fully protected from either accidental or unintentional disclosure of your invention, there are certain steps you can take to minimize the risk whether you intend on filing a patent for your invention or you would prefer to keep it as a trade secret for commercial purposes. Below is a non-exhaustive list of such strategies that may help prevent unintentional disclosure of your invention:

  1. Familiarize yourself with the requirements for patentability, including the novelty requirement, and make sure that you and everyone on your team understand what information needs to be kept confidential, and what, if any, can be revealed without jeopardizing your eligibility for a patent in the future. Employment agreements should include non-disclosure and confidentiality provisions to discourage potential actions by disgruntled or terminated employees as well.
  2. When disclosing information about your invention is necessary (i.e., to a potential investor or licensee), ask them to sign a non-disclosure agreement (sometimes referred to as an NDA) that obligates the individual with which you are sharing information not reveal the information about your invention to others or use it for their own gain.
  3. Once a non-disclosure agreement is signed, make sure all written information you share on the subject is marked as confidential so it comes within the terms of the non-disclosure agreement.
  4. Do not wait to see if your invention is profitable and viable in the market before filing a patent application. Disclosing your product to the market will deprive you of patent rights in some jurisdictions. You can always file an initial provisional patent application at a reduced cost to get your invention into the patent system and avoid this consequence.
  5. Do not disclose any more information than necessary: begin any potential negotiation with the basics of your invention and only reveal further information upon the signing of an NDA and receiving a clear indication of interest in working with you on your invention. Even in those circumstances, disclosure or sharing of information is best kept to a minimum until a patent application is filed.

Can disclosure hurt me if I don’t plan to file for patent protection?

Unfortunately, disclosure of your product can be an issue even if you do not plan on filing an application for patent or industrial design protection. In Canada, another way to protect for your invention without filing for a patent, is to keep your invention a trade secret known only to those involved in producing and financing it. This route is often taken by those who want to avoid disclosing their invention at all, because obtaining a patent or industrial design requires full disclosure of the invention and eventually rescinding your rights to exclusivity when the patent expires. Although protection of a trade secret is an informal procedure not requiring an application to any legal body in our country, it is still subject to several requirements which should be observed to ensure that legal recourse is available in the event the trade secret is disclosed. Namely, the information must be secret and not known to professionals in your industry apart from those involved with your product, it must be used for its commercial value and the owner of the information must have taken reasonable steps to keep it secret. A recipe for a popular food or beverage, like KFC or Coca-Cola, would be an example of a trade secret.

Note, however, that when a trade secret is disclosed at any time, whether intentionally or unintentionally, you may have little recourse against the damage your business may sustain. Because there is no formal record of your ownership of the invention, it may be difficult to prove ownership or prevent others from recreating your invention. Furthermore, once trade secret protection is lost by revealing the information, in many circumstances it cannot be regained. As such, if you choose to treat your invention as a trade secret, it is advisable to take strong measures to prevent public disclosure.

Are there disclosure requirements for other types of intellectual property?

For creative works subject to copyright protection, you are automatically considered an author upon creation and fixation of the work and are entitled to federal registration of your copyright in Canada if it meets the conditions outlined in the Copyright Act. No disclosure requirements are attached to obtaining a copyright registration, unpublished and published works alike can be protected. You can publish and disseminate your work but will need to provide the place and date of first publication to the Copyright Office if you apply for a copyright registration.

Disclosing your trademark, on the other hand, through commercial use is a requirement for continued trademark registration in Canada and for common law protection of your mark. In the latter case, the more use of the trademark the better to help you reach the threshold for a protectable reputation in the trademark. Prior third party use of your trademark, however, or a trademark with which your trademark is confusingly similar, can negatively impact the registrability of your mark as well as your entitlement to use the trademark in Canada.

Steps forward

Disclosure of your invention to others is often necessary to obtain funding, to arrange help with manufacturing, or to sell or license your invention. However, disclosing your invention without appropriate safeguards in place such as non-disclosure agreements can prevent you from obtaining valuable patent or design protection altogether.

As such, it is best to apply for patent or design protection before revealing anything about your invention or new design to others. The next best option is to only disseminate such information after the recipient signs a suitable non-disclosure agreement. If a potential public disclosure has already occurred, you should consult an intellectual property lawyer about whether it is likely to be a bar to obtaining intellectual property rights in some or all jurisdictions.

Contact us now for a complimentary and confidential initial telephone appointment with a member of our team if you would like our help assessing the impact of disclosure on your invention or preventing its disclosure in the future.