Disclosure: When can it invalidate a patent?

Can a prior disclosure of an invention be fatal to a patent? And if so, what constitutes “disclosure” of the invention.

One of the central pillars of patentability is “novelty” - the invention must be new, the first of its kind in the world. If it’s not new, the patent application will fail or (if discovered after the patent has issued) the patent itself can be invalidated. Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2011 FC 1323 (CanLII) is an interesting judgement dealing with a device that was manufactured and rented to a third party for use in drilling an oil well in Texas prior to the relevant date of the Canadian patent. This earlier device invalidated the patent, since it constituted an “enabling disclosure” of the invention more than 12 months prior to filing of the patent application. In this case, to prove when the earlier device was invented and disclosed, an expert was called in to examine the metadata for the design drawings, to verify when the drawings were created.

The business lessons?

  • Remember that a prior disclosure of an invention can be fatal to a patent. For the purposes of patent law, a “disclosure” of the invention can be as simple as using the invention or a prototype for a customer. For example, putting a single device into the hands of a customer without restrictions or confidentiality obligations has been held to constitute prior use which invalidated the patent.
  • Experimental use of the invention may be permitted in certain circumstances. True experimentation will not be considered a “disclosure” for these purposes. However, a use will only be experimental if it is so in the mind of the user.
  • If disclosure of the patented device was made on a confidential basis, it will not be considered a “disclosure” for these purposes, if handled properly. Therefore, confidentiality (and a properly drafted non-disclosure agreement) is critical.

Related Event: Interested in learning more? Join us on September 26, 2012 - Field Law is hosting a meeting of The Licensing Executives Society  (Calgary Chapter) on the topic of: The Perils of Disclosure: Invention Disclosure and Patent Grace Periods presented by Roseann Caldwell, Bennett Jones LLP. See link for details and registration.

Calgary - 07:00 MDT

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