In Canadian patent law, an inventor's own prior public disclosure of their invention can have serious consequences for patentability. The ability to obtain and maintain a valid patent depends on compliance with strict novelty requirements outlined in the Patent Act, particularly under Sections 28.2 and 28.3. Any premature disclosure by an inventor before filing a patent application could render the invention unpatentable.
Defining Prior Public Disclosure
Prior public disclosure may occur when an inventor, directly or indirectly, makes details of an invention available to the public before securing a filing date. This can take various forms, including:
Publishing research papers, blog posts, or articles;
Presenting the invention at conferences or trade shows;
Selling or offering the invention for sale;
Demonstrating the invention to a public audience; and
Discussing the invention without confidentiality agreements in place.
In Canada, an inventor is granted a one-year grace period from the date of their public disclosure to file a patent application. If the application is filed within this period, the inventor’s own disclosure will not be considered prior art for anticipation or obviousness analyses.
Impact of Prior Disclosure on Patentability
The novelty requirement under Section 28.2 of the Patent Act states that an invention is anticipated if its essential elements are disclosed in a single prior art reference more than one year before the filing date. If the disclosure enables a skilled person to replicate the invention, the patent claim can be deemed invalid. Some jurisdictions refer to absolute novelty (i.e. no public disclosure before the filing date).
However, Canada’s grace period allows an exception when the inventor or a person who obtained knowledge from the inventor discloses the invention within one year prior to filing. If the patent is filed outside this period, the disclosure becomes prior art and can be used to invalidate the patent.
Practical Strategies for Inventors to Protect Patent Rights
File Early – Submit a patent application before any form of public disclosure.
Use Confidentiality Agreements (NDAs) – Before discussing your invention with third parties, investors, or collaborators, ensure they sign a legally binding NDA.
Avoid Public Demonstrations – If showcasing an invention is necessary, limit access to high level general details and seek professional advice beforehand.
Leverage the Grace Period Wisely – If an unintentional disclosure occurs, file a patent application within the one-year grace period to prevent loss of rights.
Conduct a Disclosure Audit – Before filing a patent, review any potential prior disclosures and consult with a patent professional.
Conclusion
Prior public disclosure by an inventor is one of the most common pitfalls leading to patent invalidation in Canada. While the one-year grace period provides a safeguard, relying on it can be risky. The best practice remains to file a patent application before any public disclosure and implement strict confidentiality measures when discussing an invention. By understanding and mitigating these risks, inventors can ensure stronger patent protection for their innovations in Canada.
