How much information about my invention can I disclose to a large audience without compromising my ability to patent the invention in the future?

Question

I'm currently working on a new energy generator as part of an independent engineering research project at my university (in the US). I have the idea fine-tuned, and I'm ready to build the prototype. However, before I can start building the actual invention, I need to acquire some funding.

One of my school programs provides funding for student projects, however they require that the students present their idea in a meeting as part of the approval process. I'm worried that if I do so, it might hurt me when I'm trying to (or the university is trying to) obtain a patent on the invention.

That's why I'm wondering: How much detail can I share with the cohort and admin without jeopardizing my chance of applying for a patent? I really don't want to share my idea, but I need to get funding to start the project.

Answer 1

The normal way of handling this is the use of a non-disclosure agreement (NDA) also called a confidentiality agreement (CDA). As long as the recipients of your presentation sign an NDA then your presentation would not be considered public disclosure. Your school's legal department should be able to help you with this. If everyone is in a closed room and agree to keep from sharing the information then that should be adequate. The NDA makes the burden of secrecy binding.

Without a NDA, you should not disclose the actual novel aspect of the invention. Thus you could define the problem being solved, what the current state of the art is and how your invention might be superior. Just don't explain how it works. The point is to avoid public disclosure. You only need to protect the novel (clever) parts. So if you have a solar panel that uses a different type of semiconductor, you can say so, but don’t say what the composition of the new semiconductor is. Just call it “material A” or something similar.

Answer 2

The statement of the problem you are solving is usually not the confidential part, how you are solving it is. So there may not be an issue. Since we do not know anything about the invention or your intended presentation that should not be much comfort to you.

Note that the mere identification of the problem is, itself, sometimes an important aspect of an invention. It is rare but sometimes it is.

One thing you can do to be safe (in the U.S. only) is file all the materials you are presenting as a U.S. provisional application. Do not worry about format, just a PDF of your slide deck will be ok for the purpose you will be using it for. It will not be a great provisional application but if it contains everything you will present and plan to say, including answers to questions you anticipate - and you do not go beyond that material at all - you are covered for that exact material as long as you file a non-provisional within a year.

Alternatively, you could rely on the shaky one year grace period we have under the 2012 AIA That only applies to the U.S. Then you give the presentation as you see fit and file an application within a year; either a provisional or non-provisional.

In the rest of the world the provisional I suggested may not be seen to constitute a priority application and most places have a strict requirement for novelty as of the date of filing - no grace period under normal conditions.