Open Disclosure vs. Patentability: Using Public Posting to Create Prior Art

Publicly disclosing your innovations risks exposing them to competitors. Our patent lawyers help inventors utilize the strategic roles of open disclosure and patentability to protect intellectual property rights proactively. To determine the right strategy, check out this guide on open disclosure vs. patentability: Using public posting to create prior art.

Open Disclosure vs. Patentability: Using Public Posting to Create Prior Art General Overview

Both methods can be used to create prior art, which is any public evidence that an invention already exists. However, they serve different strategic goals and carry unique legal implications.

Open Disclosure Overview

Open disclosure, also known as defensive publishing, is the act of publicly revealing an invention. This places the invention in the public domain for anyone to use, although it forfeits the right to exclude others. In the USA, you have a one-year grace period after disclosure to file a patent application.

Pros

• Gets feedback from experts in your field and creates collaboration opportunities.
• Publishing information can be as simple as a blog post or a white paper, making it highly accessible.

Cons

• Requires you to eventually give up the right to exclude others from using, making, or selling the invention.
• Someone skilled in your field can easily recreate your invention from the information you shared.

Patentability Overview

Patentability is the legal process of securing a patent. It provides the patent holder with the exclusive right to prevent others from making, using, or selling the invention for a limited time. The publication of the patent application establishes its date as prior art against subsequent inventions.

Pros

• Grants the patent holder a powerful legal monopoly to exclude competitors.
• Serves as a highly formal and robust piece of prior art.

Cons

• Has a lengthy and costly process, depending on the application’s complexity.
• Undergoes strict legal criteria of novelty, non-obviousness, and utility.

Comparing Patentability and Open Disclosure

Your choice between these two approaches determines whether you keep an invention secret or make it publicly available.

Similarities

While their ultimate goals are different, they also share some fundamental concepts.

• Quid pro quo: They involve a trade-off or a “quid pro quo”. An open disclosure is made without any expectation. In patents, inventors get a monopoly in exchange for publicly disclosing the invention.
• Established public record: Both create a public record. A patent provides a formal, legally robust record, while a public posting creates a citable document to prove prior existence.
• Requirement for an enabling disclosure: Both must be enabling. This means they must contain enough detail for someone skilled in the relevant art to make or use the invention. When the disclosure lacks sufficient technical detail, it will not count as prior art, despite being publicly available.

Differences

These methods represent two opposite approaches to intellectual property protection.

1. Intent and Motivation

The intent behind each strategy is the most significant difference. Open disclosure means you give up ownership claims permanently. Patent filing establishes you as the legal owner with enforceable rights.

2. Filing Process and Formalities

Open disclosure can be as simple as publishing a detailed blog post or a research paper. This is easily achievable and less expensive. Patentability involves a formal, structured, and legal process with the United States Patent and Trademark Office (USPTO). 

3. Legal Effect

Open disclosure has no exclusionary power as it only prevents others from obtaining a patent. A granted patent provides the exclusive right to exclude others from practicing the invention, creating a powerful legal monopoly.

Major Distinguishing Factor

Open disclosure is the act of publishing an invention to create prior art and prevent others from patenting it, while patentability is the process of seeking a patent to gain an exclusive monopoly. Both create a public record yet serve opposite goals: One forfeits rights for a public benefit, and the other secures rights for a private benefit.

When to Use Open Disclosure to Serve as a Prior Art

Use open disclosure when your primary goal is to make your invention prior art to prevent someone else from patenting it, while giving up the ability to patent it yourself. Key situations where this method works best:

• Testing market demand: You need to gauge interest before investing in patent protection.
• Establishing timing: You need more development time or want to establish yourself as the authority in a new field.

When to Use Patentability to Serve as Prior Art

Use patentability when the invention is a core business asset and you want to secure a legal monopoly to protect your investment and maintain a competitive advantage. Key situations where this strategy makes sense:

• Blocking competitor patents: You discover rivals working on similar technology or an idea you want to patent.
• Gaining market advantage: You’re financially prepared to protect your intellectual property, attract investors, and build a sustainable business.

Which Type of Public Posting Is Best for Creating Prior Art?

A patent is best for establishing prior art when your goal is to secure a legal monopoly and a formal, robust, and legally verifiable record. Open disclosure is the better choice when defensive publishing is the goal, making the invention prior art to prevent competitors from patenting it.

However, the optimal approach depends on your budget, the nature of the invention, and your long-term business objectives.

Related Questions

How Does Public Posting Function as Prior Art?

Public posting makes an invention publicly accessible, which a patent examiner can use to prove it is not new or non-obvious. A public disclosure, in a blog post, video, or research paper, becomes prior art when it is enabling and accessible to those skilled in the relevant field.

What Is the Impact of Open Disclosure on Patentability?

Open disclosure can impact patentability by making an invention publicly accessible. It may be used as prior art to challenge its novelty or non-obviousness, and if disclosed before a patent application, it can lead to rejection.

What Are Strategies to Manage Public Disclosure and Preserve Patent Rights?

To manage public disclosure while preserving patent rights, inventors can file a provisional patent application before any public disclosure to secure an early filing date. You may also limit public sharing and withhold details until the formal patent application is filed.

Conclusion

Smart inventors strike a balance between disclosure needs and patent protection goals. Our patent law services provide the expertise necessary to develop comprehensive patent strategies that protect innovations while tactically leveraging public disclosure.