Timing of Intellectual Property Disclosure
Proper disclosure of intellectual property (IP) is the key to its protection. The following section describes the stages of intellectual property development and when to file for IP protection.
The first stage of IP development is innovation. This stage can be described as "what to do." A new process, discovery, or object, or a novel improvement of such is imagined. Disclosure to OTC is often premature at this point, but if you are unsure, it is recommended that you check with OTC to be certain.
The second stage of IP development is conception. The time at which you conceive “how to do it” is generally the optimal time to file an IDF (Invention Disclosure Form) with OTC. By receiving a detailed description of your innovation, OTC can determine and initiate the process which would best protect your IP.
The third stage of development of your invention, reduction to practice, involves “making it work.” This is also a good time to file an IDF with OTC. To preserve inventorship claims, IP disclosure to OTC must occur before another party files for IP protection on the same or a similar innovation.
The last stage at which you may receive maximum IP protection for your innovation is when you are preparing to publish. By disclosing to OTC several months before your innovation is published, you allow sufficient time for a provisional patent application to be filed. In this way you have the opportunity to benefit from both publication and IP protection.
You will lose opportunities for IP protection if you wait until just before publication to disclose your innovation to OTC. This case does not allow enough time to submit a patent application. Foreign patent rights will be lost; initial public disclosure must not occur before a U.S. patent application is filed. (Many companies lose interest in innovations without global potential.) U.S. patentability is also compromised.
Following publication or public disclosure, foreign patent rights are lost. Patentability in the U.S. is jeopardized. The likelihood of any IP protection at this point is extremely poor.
|Stage of Intellectual Property Development||Disclose to OTC?|
|Innovation (what to do)||May be good timing|
|Conception (how to do it)||May be optimal timing|
|Reduction to practice (making it work)||Yes – very good timing|
|Preparation of a Publication||Yes – good timing|
|Submission of a Publication||Poor timing – loss of some rights|
|Shortly before Public Disclosure||Poor timing – insufficient notice to submit a patent application|
|After Disclosure or Publication||Extremely poor prospects – no foreign patent rights; U.S. patentability compromised|
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