When dealing with inventions, best practice is to file a patent application before any public disclosure of the invention is made. However, this is not always possible. In some circumstances, for example, during field trials, some disclosure to third parties may be required. So, how can you reduce the risk of your own disclosure counting against your own patent application?
It is common for inventors to build and test prototypes of their inventions during the initial stages of development. During the development stage it can be extremely useful to have a third party, such as a potential customer or end user of the invention, take part in the testing of the prototype. This allows the inventor to gain valuable, real world, information that can be used to improve the invention or ascertain its commercial viability.
During this stage it is not always clear which aspect of an invention is worth protecting and some inventors delay filing patent applications until after successful trials have been completed. It is vital to ensure that there are no accidental disclosures of the invention that may invalidate a future patent application.
An invention is disclosed if it is made available to the public in any form. An invention that is contained within a locked enclosure, but placed in a publicly accessible place, may still be disclosed to the public if a person skilled in the art can deduce how the invention works. This was shown to be the case in Lux Traffic v Pike Signals (1993), where prototype traffic signals were disclosed to the public when they were field tested on the road. Even though the invention was in a locked container, the skilled person may have deduced how the invention worked by observing the traffic signals in operation.
Therefore, if it is necessary to test an invention in a public place, even if the mechanism or inner workings of the invention are hidden, it is strongly recommended that a patent application be filled prior to any tests being carried out. For instance, it is possible to file an application at the UKIPO and delay paying any fees for up to a year. This can give the inventor the opportunity to test the invention in the public domain without the risk of invalidating his or her patent application.
If, instead of testing the invention in a public place, the invention is given to a third party to test, confidentiality is essential and it is highly recommended that a non-disclosure agreement (NDA) is put in place. This minimises the risk of prejudicial disclosure of the invention, allowing a patent application to be filed at a later date. However, what happens in the case where a third party is unwilling to sign a NDA? This can sometimes occur when a third party is wary that they may have developed the same invention independently, and by signing the NDA, they are effectively prevented from developing their own idea.
In cases where an NDA is not possible, any invention handed over to a third party should be contained in a secure “black box”. This is reinforced by a recent UKIPO decision in Manitowoc v Scott, Scott, Scott & Scott, which pertained to an application for revocation on the grounds of, amongst others, lack of novelty in view of prior use. The proprietor of the patent had provided a prototype of the invention to third parties for testing, prior to the priority date of the patent. The invention related to a system for cooling and dispensing beverages, where the beverage is cooled en-route to a dispensing font, and where the font is also cooled to create a decorative effect. During testing, prototype coolers were installed in two pubs. The prototype coolers were contained within a box which was riveted closed and security sealed. It was not possible to work out how the invention worked without opening the box. In this decision, the Hearing Officer determined that, because the box was riveted closed and security sealed, a third party would have had to have used some form of destructive force in order to open the box. The coolers were the property of the proprietor, and any reasonable person presented with this situation would understand that they were not at liberty to open up the box. The Hearing Officer therefore decided that there was a clear implicit obligation of confidentially. The application for revocation thus failed.
It is highly recommended to file a patent application or secure an NDA before handing over any product containing an invention to a third party. However, as this case demonstrates, if this is not possible then there may still be ways to protect the invention, although these ways will have to rely on arguments based on implicit confidentiality, and such arguments may not always be successful.