I think I made a mistake about a month ago and disclosed an idea that I had to a colleague. I'm in the process of taking the idea to market, but it hasn't gone public yet. I wasn't planning on patenting it, but it very well might be patentable. Can the person that I disclosed the idea to patent it?

  • Quick summary: I think the answer is technically "no" -- if the other person didn't independently invent it, then it's not his to patent. If he does file for a patent, however, the onus is on you to demonstrate that he did not independently invent it and got the idea directly from you. You must also consider that your disclosure of the idea in a non-confidential setting constitutes a kind of "public disclosure" which can have legal ramifications as well. (But someone else will have to tell you exactly what those are; I don't know.) – apsillers May 7 '13 at 20:38
  • There is a similar question that might offer additional insight. – vallismortis Jul 18 '15 at 17:08

At least in the US, part of filing a patent application involves an oath/declaration, which includes a provision such as:

I hereby declare that: [...] I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention titled:

Filing such a claim if he knew it to be false (i.e., knew that he was not the original and first inventor of the subject matter) would not only invalidate his application, but is probably1 illegal in itself, and could be subject to prosecution.

There are some provisions to allow (for example) a patent application to be filed if the inventor dies before filing the paperwork, but it doesn't sound like those would apply here.

  1. But note that here I'm assuming US law. I suppose in some countries 1) you might not have to submit such a declaration, or 2) that knowingly lying on such a declaration might not violate any laws. Either of those would surprise me at least a little though.

As another answer says, only an actual inventor or someone an actual inventor has assigned their rights to can legally file in the U.S. since the AIA went into effect the declaration has been changed to

I believe that I am the original inventor or an original joint inventor of a claimed invention in the application.

If the disclosure would not be considered confidential it did start a one year clock on when you can file. Also, as mentioned, if you both file and he files first you need to prove he derived it from you. Maybe worse, he can invent something different, inspired by what he leaned from you.

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