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[Patrick Guillot]

For you attorneys out there, I think I know the answer to this already but I am hoping for some new insight. If a product idea is revealed to a comany (with or without NDA) in the hopes of obtaining a licensing agreement; does this constitute a public disclosure and void the patentability of said product?

Thanks in advance for your help.

[JimIvey]

First of all, the NDA matters.  With the NDA, no public disclosure.  If they violate the NDA, I think that bars the patent and your sole remedy is in contract law.  

Without the NDA, it depends on a number of factors.  As the idea owner, you have the power to avoid that issue altogether.  Just file your application before making any disclosures without an NDA.  Then, there's no doubt in the viability and enforceability of your patent.  Disclosing without the NDA is just inviting a huge multi-million-dollar fight in courts.  Remember, an ounce of prevention is worth a pound of cure.

If you really want to know the answer, maybe some litigators hang out here and can map out the precise inquiry into when exactly a disclosure is "public" under Section 102.  

And, of course, the answer varies from country to country.

Regards.

[ringo]

An NDA is essential, however you can also prove it was in your possession at a certain moment in time by registering with a Digital Notary such as www.file-reg.com. I have been doing this for a couple of years now and have found that because I can legally prove I came up with a concept at a certain moment in time the other party has never attempted to steal my work. You can also register your work while you are developing it, therefor this will strengthen any claim you make.

It does not rule out an NDA, which remains a priority, but at least you have a lot more then just a piece of paper.

[Isaac]

Without an NDA, a disclosure for the purpose of licensing
discussion would likely not count as a publication, a patent,
or as placing the invention on sale.  So the disclosure itself
should not count as a publication.  However without an NDA,
it might be that the person you disclose the invention to could
make a publication or attempt to sell products thus starting
a 1 year clock.

I understand that you can avoid the problem by filing an application
but I don't believe that's always a practical solution.  There are
good reasons why there is a one year grace period in the US.

[JSonnabend]

I have been doing this for a couple of years now and have found that because I can legally prove I came up with a concept at a certain moment in time the other party has never attempted to steal my work.

If that's true, it's likely pure dumb luck.  Unless you have patent protection for an idea (or it's held as a trade secret, which is by definition not the case when you disclose to a "digital notary" -- whatever the heck that is), anyone is legally free to "steal" your invention.  With that in mind, I think Ringo's advice may quickly be understood to be bad advice.

- Jeff

[JimIvey]

Normally, I'll let good advice stand unless I think I can add a little something to it.  However, I'm seeing a flurry of posts here about this on-line registration system and I have to say that I agree whole-heartedly with Messrs. Clark and Sonnabend here.  The advice given is sufficiently important to justify adding nothing more than a little additional weight of concurrence.

Regards.

[JSonnabend]

Normally, I'll let good advice stand unless I think I can add a little something to it.  However, I'm seeing a flurry of posts here about this on-line registration system and I have to say that I agree whole-heartedly with Messrs. Clark and Sonnabend here.  The advice given is sufficiently important to justify adding nothing more than a little additional weight of concurrence.

Regards.

First of all, Jim, no attorney can ever "let good advice stand" when that advice comes from another attorney.

Second, I am not a "mess"  (you clearly had a typo there.  You wrote "messrs" when I'm sure you meant to say "messes").



- Jeff

[JimIvey]

As for letting things stand:  I appreciate your point.  In a public forum (like this one), I don't have to respond to every comment.  It's tempting sometimes, but I do have some paid work that needs my attention, and I don't want to be annoying.  Hopefully, I'm having some success in the latter.  ;-)

Isn't "Messrs." the plural of "Mr."?  Thought it was.  I'm pretty sure the plural isn't "Mrs."  ;-)  No "mess" intended.

Regards.

[kc]

Just a few comments:

Firstly, IIRC, an NDA will not protect you from the "on sale" bar in the U.S..  If you are commercializing your "idea" before you file a patent you may be barred from patent protection, regardless of the the NDA.

Secondly, the disclosure must be enabling.  Depending on how you reveal your product idea, it may or may not be a public disclosure.

Lastly, regarding the online registry; since most countries are first to file systems (with the U.S. to follow suite) conception date is not all that important.  If a third party files an application for your invention in Canada, for example, you will have an uphill battle to prove that they stole your invention.

[ringo]

On the site of the online registry it says clearly:
__________________________________
Patent / Trademark

Registrations with File-Reg provide proof of evidence but does not imply Patent or Trademark registration. One of the benefits of File-Reg is that you can prove you have actually carried out the research and development in developing your product. File-Reg does offer you links to copyright, trademark and patent offices worldwide.
__________________________________
So there is no implication that a registration can replace a patent!!

But a 'digital notary' can provide electronic evidence that a file/text/concept..... whatever (as long as it is digital) existed at a certain moment in time and can be proved in a court of law.

Try typing in 'digital notary' in Google - and a bright new electronic world will light up your mind. I did, and it saved me (and dad) a fortune on legal costs.  

[ChrisWhewell]

Don't lose sight of the fact that there is an absolute novelty requirement for patentability in all countries outside of the US.  Disclosing without an NDA can nstantly voic your ability to obtain patents in foreign countries.  If your invention is valuable here, it is probably valuable somewhere else.  In most cases, file early , and file often holds as good advice.