Shhhh….Keeping your New Idea Quiet

There is nothing quite like the thrill of coming up with the “next best thing” (or so I am told); however there can be quite severe consequences if you start shouting your new idea from the rooftops straight away!

At bluebox, we encourage all Public DisclosureQUT staff members and students to contact us as soon as they think they have a great new idea that they would like to pursue further. This is because the bluebox team has experience in dealing with new innovations and can assist in developing strategies to protect and transfer QUT intellectual property to the real world. One of the questions we often ask when developing a strategy is:

“What is the best way to protect this idea or intellectual property (IP)?”

There are a number of ways to protect your idea, including:

  • Trade secrets (keeping confidential)
  • Patents
  • Registered Designs, and
  • Copyright

As well as other forms of IP protection such as trademarks, domain names, plant breeders rights etc. However, some of these options can be quickly ruled out if the idea has already been “publicly disclosed”.

Example- Patents

At bluebox, we commonly seek patent protection which gives the owner legally enforceable rights to exploit their invention for the life of the patent (generally 20 years from filing date of your complete application).  However, in order to be granted a patent, there are a number of criteria that need to be satisfied. These criteria include:

  1. That your new idea is patentable subject matter
  2. That your new idea is novel
  3. That your new idea is non-obvious, and
  4. That your new idea is useful.

Note: In order to obtain rights, all four criteria need to be satisfied.

The criteria that comes into hot water when your idea has been publicly disclosed is number 2- novelty. In order for your new idea to be considered “novel” or “new”, it is compared to what is considered the “state of the art”. Whilst various jurisdictions have different definitions, essentially state of the art means anything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing a patent application. And by this definition, can even include your own disclosures!

In order for your disclosure to be considered made “available to the public however, the disclosure:

  1. Must have been made available to at least one member the public (ie. not disclosed under conditions of secrecy or similar),
  2. Has to teach the information to be used in the evaluation of patentability (could one skilled in the art take your disclosure and reproduce your product without undue burden?) and
  3. Technical teaching of the prior art must be enabled.

As you can see, it can be quite easy to disclose your idea to the public (especially when you are excited), however if you do this it can potentially limit your ability to protect your idea in the future! Fortunately, some jurisdictions allow for what is called a grace period, which allows for you to file a patent application within 12 months of the first public disclosure. However, not all countries allow this and in fact some of the major markets do not.  Hence, by disclosing before protecting, you can limit the commercial potential of your invention.

Moral of the story

Before telling the world about your “next best thing”, please first consider what the best IP strategy for your idea is. Having a chat to bluebox before you submit your manuscript, or present a poster at a conference and publicly disclose can make a world of difference in the long run, and can be the difference between a product and a good idea.

Written by Kate Taylor – Commercial Associate