I have an idea, that is of potential. However, before applying for a patent(U.S then international) it's going through a peer-review process; that is me sharing my work with a few individuals(qualified in the field) to get their analysis, and then will apply for a patent. I've documented my conversations with those individuals. Is that considered a safe move to avoid any concerns of theft, also due to the fact that they agreed not to share my work the moment the participated with my work(no signed documents though, only statements via email). Should I be concerned?

1 Answer 1


There are two issues here:

  • Is your disclosure prior art?
  • Is there a reasonable risk of theft?

Is your disclosure prior art?


If you have made your invention available to the public, your invention would no longer be novel (35 USC 102(a)(1)). This would prevent you getting a patent (except for the grace period, see below).

Since you have sought analysis from others, presumably you have provided them enough details to fully understand your invention. This would prima facie be making your invention available.

But is to the public? If you disclose your invention to a person who is free to tell others, this is sufficient. Conversely, disclosing to a person who is bound by a non-disclosure agreement is not a public disclosure. Thus this turns on whether your agreement with them by email constitutes a valid non-disclosure agreement. This would depend on your jurisdiction and the terms of the email.

Grace period?

In the US, you have 12 months after your own disclosure in which you can apply for a patent (35 USC 102(b)). Thus even if your disclosure to these other parties would count as prior art, as long as you file an application within 12 months of the disclosure, you wouldn't be prejudiced by it.

This does not apply to most other countries however.

Is there a reasonable risk of theft?

Maybe. It depends on whether you trust the people you told.

There is nothing practically stopping them from applying for a patent now. It would certainly be fraud, but the system relies on you to notice it and fix it. Thus while you may well be able to prove that you originated the idea, this is a costly and lengthy process, and one that is best avoided.

What should you do in the future?

File a patent application before any disclosure to untrusted recipients. Any disclosure to trusted recipients should still be done under a valid non-disclosure agreement.

What should you do now?

File a patent application as soon as possible, I would think.

  • Are you sure one Person counts as the public? In Europe that's not enough. Though somebody not bound to secrecy could publish and therefore make their knowledge prior art. And the Grace period would impede you from extending the application to most other countries by claiming priority as the pct doesn't have this.
    – user18033
    Feb 12, 2017 at 14:16
  • @DonQuiKong Yes (or at least it can). It depends on the nature of the disclosure. Xerox v 3Com stands for a disclosure to a single person with an implicit duty of confidence to be ok. This sort of shows contrapositively that if there were no implicit duty of disclosure, this would be prior art (as public use).
    – Maca
    Feb 13, 2017 at 4:10
  • I believe this is consistent with Europe, where an "oral disclosure of information to a single person will suffice to make it available to the public" (source).
    – Maca
    Feb 13, 2017 at 4:10
  • 2
    @DonQuiKong I believe Europe is rather flexible here. According to EPO Case Law " information is generally to be regarded as having been made public if even just one single member of the public is in a position to gain access to it and understand it, and if there is no obligation to maintain secrecy" (epo.org/law-practice/legal-texts/html/caselaw/2016/e/…). In other words, one person might suffice, but it has to be examined on a case-by-case basis (the Case Law Book provides a good overview, for anyone who is interested). Feb 13, 2017 at 8:28

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