First-to-File, First Strike

Prior to the America Invents Act (AIA) little could be done once an entrepreneur suffered an inadvertent disclosure of patentable subject matter.  However, the AIA provides a partial cure: make a shielding disclosure and fast.  

Under the first-to-file rules of the AIA, an inadvertent disclosure could allow a competitor to seize the disclosed material and file their own patent application. The competitor could also modify/improve upon the disclosed material thereby creating prior art against the entrepreneur.  There would seem to be nothing the rightful inventor could do to prevent this occurrence.  But, if they move quickly, the entrepreneur could shield themselves by striking first. 

That first strike could include what those familiar with the AIA refer to as a “shielding disclosure.”   Shielding disclosures are any disclosures made by an inventor for which they subsequently (within a year) file for patent protection.  Shielding disclosures become prior art against every other “inventor” (whether first to file or not) other than the one who made the shielding disclosure.  In other words, if the true inventor acts quickly, they could preempt the competitor’s application by making a deliberate disclosure of their material.

Of course, the question arises, what should be in the shielding disclosure.  Obviously, it should contain the inadvertently disclosed information.  Additionally, the shielding disclosure probably ought to contain any "obvious" variants of the disclosed material.  But that begs the question: what was inadvertently disclosed.  The answer will depend on the situation.  But, the entrepreneur should consider carefully what they include in the shielding disclosure.  Things they fail to shield might be sacrificed to the competitor.  Yet, things they shield will lose their trade secret status (if any) and will lose the ability to gain patent protection in many foreign countries. 

Clearly, inadvertent disclosures should be avoided.  Yet if you suffer one, we at the Villhard Patent Group would be happy to discuss the situation with you.  We can be reached at contact@villhardpatents.com or at (512) 897-0399.  For more information about us please see www.villhardpatents.com.  We look forward to hearing from you.