Have You Disclosed Your Invention Or Design? Keeping Things Secret - Novelty

It is a natural impulse to spread the good news when you have developed a great new product - the more publicity the better! It also might appear to make perfect business sense to talk about your great new design or invention in seeking investors. But take care, such actions may cost you your valuable IP.

The invention must be novel in order that it may qualify for a grant of patent. It must therefore be kept a secret until the patent application has been filed. If it has been disclosed anywhere else in the world, it may not be regarded as novel. Although there are certain specific situations where a disclosure may be disregarded (e.g. in breach of confidence, if displayed in specific international exhibitions etc.), in most cases public disclosure is novelty destroying and makes the invention unpatentable. Note though, that different countries have different standards in determining how disclosure would affect the novelty.

Novelty is also a requirement for registered designs. If the designs has been registered, or has been published before the date of application of the design registration anywhere in the world, in respect of the same or any other article, the design is considered to have been disclosed and therefore not new or novel. The design is also not new if it differs only in immaterial details, or features, from other designs that are commonly found in trade.

You might think this is all restrictive - but ignore this and your IP could be lost. Although not all disclosures are novelty destroying, in that it might not reveal the essence of your invention or disclose the design - is it a risk you would care to take? You might be able to get around a potentially novelty destroying disclosure, but it would probably mean greater work for your IP lawyer (and hence possibly greater costs!)

So What Can You Do?

Well, you may wish to stake a claim on your IP first before deciding to go further. Singapore's patent regime allows you to file an application without claims (the legal "fence" defining your invention). This would allow you to stake your claim on an early filing date. You must however submit your claims within a certain time frame. A design registration is relatively simple and quick to complete. Rushing out the application before any publicity goes out may save you headaches later on.

Sit down with your IP lawyer if there is not-to-be missed opportunity for publicity and define what you can and cannot do or say. You may be able to talk about the benefits of the invention without going into details.

If there is a need to disclose details, say to potential collaborators or investors, then you may wish to ask them to sign a non-disclosure agreement. An example of what can constitute a non-disclosure agreement is attached for reference.

Make sure your employees are aware of the role they play in keeping things secret. Company policy on disclosure of IP and clearances for use of information should be put into place in your company to ensure no accidental novelty disclosures are made.

An ounce of prevention is worth a pound of cure.