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Disclosure of patentable inventive step information will destroy novelty (an essential requirement of patentable subject matter) unless the information is:-

. (i) the subject of a publication in a paper for a learned society and a patent application is filed within 6 months; or

. (ii) a reasonably necessary public trial by the patentee and a patent application is filed within 12 months from the start of the first public working of the invention;

. (iii) or the information is made subject to a confidential information agreement so that where a person manufactures a product on the instructions of the inventor without any obligation of confidentiality imposed the manufacture will with certain exceptions constitute use of the invention which will anticipate a subsequent application for patent protection whether the claimed invention is of a product, a process or the product of a process

Even confidential secret use under a confidentiality agreement for the purpose of trade or commerce i.e. negotiations re offers to sell or license of the process/product the subject of a patent will destroy novelty and inventiveness and therefore a patent application's validity chance if a provisional patent application is not already in place.

A confidentiality agreement does not protect this type of disclosure / use ie for the purpose of trade or commercial exploitation by offering the invention for license or sale.

Re Wheatleys Patent Application

In Re Wheatleys Patent Application the applicant invented a new kind of pull key which could be used to stop conveyor belts in coal pits.

A meeting was arranged and a prototype demonstrated on the grounds that the p[arties signed a confidentiality agreement The National Coal Board official tat the meeting was so impressed that he gave an oral order subsequently confirmed in writing for ten keys.

On the day on which the keys were delivered the applicant filed his patent application The application was opposed on the basis of prior use. The court held the applicant?s purpose in demonstrating the key was to bring about a sale and the agreement to purchase resulted in a use of the invention to achieve commercial objects He dealt in the product of his invention before obtaining patent rights and the use therefore was held to deprive the invention of novelty even though the commercial dealing was made subject to the strictest requirement of secrecy

Therefore on the basis of Re Wheatleys even if an inventor approaches a prospective licensee with a view to obtaining an up front payment to assist with the costs of prosecuting a patent application this could render the invention non-patentable invention However such issues raise questions of degree.

My view is that whilst an inventor should not be able to misuse the patent system by obtaining commercial benefit from his invention before applying for a patent, one might question whether an inventor should not be able to seek confidential consultative reassurance from commercial backers before he/she commits to the patenting process. I?ll need to follow up further the subsequent application of Wheatleys by the Courts.

There is Australian case law to the effect that obtaining an agreement from a third party prior to filing a patent application for an input of capital to allow a prototype to be made and a patent to be filed was not a secret use of the invention (Innovative Agriculture -v- Cranshaw - Fed Court of Australia).

Sean Mullen © The University of Queensland