If I discuss or seek advice from others on portions of a patent on public sites such as SO, does that invalidate the patent?

For example, lets say I have an idea in mind of a software patent which consists of X, Y, and Z? I know that step Y can be done, but just don't know exactly how would be the best approach. Say for example that step Y requires a sorting algorithm (perhaps this is not the best example, but should clarify what I am thinking of), and I post on SO a very detailed description of things I need sorted, and asked for advice. A detailed solution is posted along with the a description of how it works and why it would be the best approach.

I am not posting the entire patent but just a step in the overall process.

To protect my self I would think that filing a provisional would be best so that I have time to fill in the details. But if someone else actually solved X for me, does that effect my patent?

Or, taking this a bit further, suppose I post three different questions, one for each of the three steps? Basically, I have gotten others to do the work for me. But I am still putting the steps together. Would this invalidate the patent?



1 Answer 1


There are a few issues hidden in your question. I'm first going to write about whether these postings create prior art. Next, I'll write about whether a suggestion from a third party alters inventorship.

Prior art and online postings: Public discussions create create prior art. If done in a public online written forum then the postings will count as "printed publications." They would also likely qualify as proof that the invention (or a portion of the invention) was known or used by others. Public responses to your inquiry would also be seen as a printed publication. However, a private message would not normally create prior art because it is not public. More here.

The prior art impact of of the online posting will depend upon when it was publicly posted relative to the effective filing date of the patent in question. There are three primary situations:

  1. Posted after filing the patent application: Not Prior Art
  2. Posted 1-year or less before filing the patent application: Prior Art in Some Cases
  3. Posted more than 1-year before filing the patent application: Definitely Prior Art

The gold standard here is to wait until after you have "secured a filing date" by filing a patent application. At that point you can communicate as much as you want without jeopardizing the novelty of your invention. Now, there are still reasons not to do this -- especially if you are planning to market your own product or if you are planning on filing further patent applications.

The statute that controls in the US is 35 U.S.C. 102. This provision was extensively revised in the 2011 America Invents Act (AIA). The old rules apply to patent applications filed before March 16, 2016 and the new rules apply to patent applications filed on or after that date.

The 1-year before filing uncertainty is based upon what we call the "Grace Period" for filing patent applications. The US is the only major country with a standard grace period that allows for pre-filing disclosures by the inventors. Thus, if you are seeking a European patent, any pre-filing online public posting could be used to block your later-filed patent from issuing. The US grace period allows patent applicants to make a public disclosure and then wait for up to one year to file their patent applications. This grace period was narrowed in the AIA, but its exact scope is a matter of heated debate between patent attorneys.

Inventorship: In the US, patents must be filed by (or in the name of) the inventors of the invention being patented. Often there is only 1 inventor. But more often than not, patent applications list multiple "joint-inventors" who each contributed to at least one of the patent claims. Under the statute, “Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. 116. The online suggestion would certainly be sufficient to create joint inventorship if the suggestion becomes part of your conception of the invention. However, the tricky part is that the the contribution will count as a joint inventorship if it was "simply a reduction to practice of the sole inventor’s broader concept.” Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460-63, 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998).

If there are two inventors, each inventor has full rights to the patent. As you can imagine this could lead to some conflicts.

  • Thanks for the very thorough response. So, it seems that it is best to just file a provisional patent with as much detail as possible and then it is OK to discuss in public. Oct 3, 2012 at 19:37
  • Public discussion of what you've filed won't cause you any problem in terms of getting a patent. Some folks are still cautious in disclosing because (1) patent rights are not enforceable until you actually get a patent; (2) competitors may be able to create an alternative not covered by your patent and public discussions might give them a head start, etc. Oct 17, 2012 at 16:13
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    @DennisCrouch, I don't see how those two points matter. When the patent has passed (which is just within a year), the competitors would no longer be allowed to sell those products isn't it? The would have to close shop anyway. 2) Also, regarding "a private message would not normally create prior art because it is not public", if the receiver of the private message (e.g. email that is signed) publicly posted that private message in a public forum, is the private message that has been publicized still considered a private message?
    – Pacerier
    Oct 10, 2015 at 21:37

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