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If a patent has been filled and there is the need to disclose concepts illustrated in a pending patent without an NDA, is it safe to do? if the listener wants to patent it instead of the inventor this should be prevented as the patent pending status gives a priority date. So, what are the risks in divulgating?

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  • Can you clarify if you’ve file a provisional application or a non-provisional application? It makes a big difference.
    – Eric S
    Oct 30 '20 at 2:37
  • And, whatever type of application it is, did you have a registered practitioner to draft and file it?
    – George White
    Oct 30 '20 at 4:31
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If your pending patent application is well written and truly covers everything you need covered there is not much downside. A non-provisional application will be published by the USPTO at the 18 month point and it will all be public then.

On the other hand, if it is a provisional application written and filed by the inventors themselves you potentially have some downside. It is very likely the application does not properly cover the subject matter in a complete and enabling manner. When you go to a professional to work on a non-provisional they are very likely to re-write it completely and get more details from you and possibly spur you to come up with variations and alternative embodiments you will want covered.

When you talk to people about your invention, if you go beyond the words and drawings in your provisional application, you have made that material public without publishing it. That type of disclosure is not protected by the 1 year sort-of grace period we have under the AIA and you will lose the right to include it in your non-provisional. If you have the recipient agree to keep it confidential you can avoid that problem.

However if you are disclosing to venture capitalists, who will not sign NDAs, you are better off than if you hadn't filed something.

And note that, if you do not follow up with a non-provisional within one year, the filing date of a provisional application does not get you any priority at all.

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