If you have invented a product, manufacturing process or process that you think could be patentable, you must not publish it or discuss it with others before filing a patent application.

It is common for inventors to feel the desire to disclose their invention in conferences, articles, exhibitions or even through social networks, prior to having formally applied for a Patent before the corresponding body. However, such disclosure may jeopardise the granting of the patent.

The novelty requirement under the Patent Act

Law 24/2015 on Patents establishes three requirements for an invention to be patentable: novelty, inventive step and industrial application. 

The new implies that the invention has not been disclosed anywhere in the world before the filing date of the patent application, since if the invention has been made available to the public, even in another country, it will not be considered new and therefore, the patent cannot be granted in Spain.

The Patent must not be covered by the "prior art". 

What is "state of the art"?

The concept of state of the art is fundamental in assessing the novelty of an invention. According to Article 6 of the Patent Act, prior art includes "everything that prior to the filing date of the patent application has been made available to the public in Spain or abroad". 

This means that any disclosure of the invention, whether written or oral, by use, or by any means accessible to the public, is part of the prior art. 

This definition is not only limited to Spanish territory, but also applies internationally, so that if an invention has been published or disclosed anywhere in the world prior to the patent application, the patent will no longer be considered new and therefore cannot be patented in Spain.

Based on the above, the inventor himself may harm the novelty of his invention if he publishes or discloses it, but in addition, if he shares it with third parties before applying for a patent, he may be exposed to plagiarism or third party publications that prevent him from obtaining a patent title for his invention in due course.

To avoid legal problems in the event that the subject matter of an invention needs to be shared with third parties, a confidentiality contract, commonly called a Non Disclosure Agreement (NDA), must be signed.

The conclusion of confidentiality contracts

During the process of creating a Patent, it is common for commercial opportunities to arise for the inventor and for him to need to share his invention with other persons or companies, prior to having officially filed the Patent application.

In this case, in order to avoid plagiarism, non-consensual uses or unwanted publications and disclosures, it is of vital importance to enter into a confidentiality agreement before sharing any information or documentation relating to the invention with anyone interested in it.

In this regard, it is essential that the confidentiality contract is drafted correctly, in order to safeguard the interests of the inventor, establishing financial penalties in the event of non-compliance, among other things.

Exceptions and important considerations

It is true that there are certain exceptions that allow inventors to disclose their inventions without losing the possibility of patenting them. In this regard, if the public disclosure occurs within the six months prior to the filing date of the patent application and such disclosure is due to one of the following reasons, the novelty of the invention will not be affected: 

a) The disclosure has been made in abuse of the rights of the applicant or his principal (e.g. if the person making the disclosure does so in breach of a confidentiality agreement with the inventor).

b) The disclosure has been made at official or officially recognised exhibitions within the meaning of the Convention relating to International Exhibitions, signed in Paris on 22 November 1928.

It is important to underline that for this benefit to apply, it is crucial that the inventor files the patent application as soon as possible after the disclosure and in any case no later than six months after the disclosure.

The importance of legal advice during the process of creating and protecting a Patent

Inventors are advised to consult an industrial property lawyer before making any decision on the publication or use of their creation. 

An experienced patent attorney can advise on how to properly protect the invention, explaining the procedures and strategies to avoid loss of novelty, avoiding any legal problems.

If you need help, at MBR Lawyers we are patent attorneys. Contact us.