is the third part of a three-part series of articles
intended to provide guidance to the general practitioner
concerning intellectual property issues.
IP GUIDANCE FOR THE GENERAL PRACTITIONER – PART III
3. Advise Your Client About Disclosure
and Use Issues.
There are very serious consequences under the patent laws if a client discloses an invention before getting a patent application on file. In the United States, an inventor has one year after the public disclosure of an invention in which to file a patent application, but in most countries, there is no one-year grace period. Instead, in those foreign countries that are "absolute novelty" jurisdictions, once an invention is publicly disclosed, the invention is in the public domain, and the inventor no longer has the right to file for patent protection.
The issue of what constitutes a public disclosure varies by country. Non-disclosure agreements help but are not necessarily definitive. In the United States, the only exception to the public disclosure rule is "experimental use." For example, if an invention has to be publicly disclosed in order to be tested, or if the disclosure is to someone on the
research and development team, then the one-year grace period is not triggered. If an invention has been publicly disclosed, patent counsel should be contacted immediately to consider the ramifications of the disclosure and its impact on foreign and U.S. filing deadlines. For more information on public disclosure rules as they pertain to patent law, please click here.
There are similar "disclosure" issues under copyright law. If a copyright registration is not obtained within three months after the first public disclosure of the work, then the copyright owner loses the right to ever recover statutory damages or attorney's fees in the case of infringement. It is critical in the area of copyright law to consult with a knowledgeable attorney so that the timing of the filing with respect to any public disclosure can be controlled to avoid waiver of remedies.
In the area of trademark law, clients must understand that they cannot tie up a trademark without actually using it. In this regard, the mantra in trademark law is, "Use it or lose it." Even after a registration is obtained, the client will not be able to renew the registration if the client is no longer using the mark. If a mark is not used for a period of three years, the law presumes that the mark has been abandoned.