By Debby Winters
As social media becomes increasingly more popular, it is essential that companies and inventors avoid inadvertent disclosures of their inventions on social media networks and the company’s website. I have a client who realized this a bit too late. The company posted a Youtube video on the invention to spark interest and promptly filed a provisional patent application. However, we were not ready to file the utility application within the years’ time and had to file a new provisional patent application. This means more than one year lapsed between posting the video and the subsequent provisional patent application filing. We are now working to find a solution to this problem.
Because social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations, we must adapt in our thinking about public disclosures. Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason. If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.
While there are no cases deciding whether Youtube videos constituting a public disclosure, US Patent and Trademark Office Examiner training videos suggest that the provision covering this includes “YouTube videos, Website, and other on-line material”. Accordingly, if an inventor discusses a new invention on a social media website or even on the company’s website, and that invention is copied by a second person (the deriver), who then files a patent application based on that invention disclosed on the web, the original inventor may lose the rights to any subsequent patent that is issued based on the deriver’s filed application.
However, all may not be lost for the original inventor. The rights of the original inventor may be protected thanks to an exception. The exception is what we term the one year rule. This rule gives the inventor one year from the disclosure to file a US application. A glaring issue with the “exception” is what exactly constitutes a “disclosure.” For example, if the company simply makes a broad announcement of the invention, without any detailed discussions or descriptions, would that “disclosure” be sufficient to allow one of ordinary skill in the art to develop that invention? In the current environment where much innovation and improvement is centered on facilitating a user’s interface with an electronic device, it is possible that disclosure of minor contemplated ‘tweaks’ to an interface would be sufficient disclosure to enable one skilled in the art to craft and file a complete patent application on the improvement. Some of the lack of clarity lies in the fact that the granting clause refers to “descriptions” of the invention, whereas the exceptions conferring a grace period refer to “disclosures.” Until these questions are answered by inevitable litigation proceedings, companies would be wise to revisit their social media and website policies and ensure their IP rights remain protected from the outset.
Perhaps for information that is for an “up and coming” product, companies or individuals can request additional information before such information will be made available on the web. Some safeguards should be in place to take advantage of the marketing benefits of web disclosure while preventing a deemed public disclosure. Without any precautions, if an inventor or unauthorized employee of a company inadvertently discloses an invention on social media networks, and does not file an application based on that disclosure within a year, a second inventor, or deriver, who obtains that disclosure may file an application based on that disclosure, or may modify the disclosure and file an application based on the modified disclosure. The filed application would then be considered prior art against a subsequent application filed by the original inventor. Or if the original inventor does not file within one year of the inadvertent disclosure, the original inventor may lose all of its rights.
Inventors and companies ideally should file patent applications prior to making any disclosures on social media websites or on the company’s website. This protects both U.S. patent rights and patent rights in foreign jurisdictions. At a minimum, a detailed and enabling provisional application should be filed outlining the basic aspects of the invention, and should be followed up by filing a non-provisional application within a year of the filing of the provisional application. This is particularly important in instances where the company intends to obtain patent protection in foreign jurisdictions.
It is imperative that companies regularly and carefully examine their technology portfolios and ascertain the importance of each invention. Detailed provisional applications should be filed quickly for inventions that are of great importance to the company, and applications for which foreign patent protection would be sought. The company has to ensure that a non-provisional application is filed at the U.S.P.T.O. within one-year of the provisional application.
For less important inventions, and for inventions that will not be pursued in foreign jurisdictions, disclosures may be made as a defensive maneuver. In other words, a company may decide to disclose particular inventions to preempt protection of a similar invention by a competing company.
Companies should also ensure that employees and investors are aware of the detrimental effects that may result from the inadvertent disclosures of company innovations on social media networks. In addition to having their employees and investors sign confidentially agreements, extra vigilance should be taken for casual disclosures via social media, the privacy of which cannot be guaranteed.