Disclosing an Invention Before Filing a Patent: Trade Fairs, Presentations and Investors

Disclosing an invention before filing a patent application can cost the invention its novelty and put the patent right at risk. In Turkey, Article 84 of Industrial Property Law No. 6769 (SMK) tolerates disclosures made by the inventor within the 12 months before filing; however, the European patent system has no general grace period, while the US allows a 1-year period. In short, an invention you displayed at a trade fair or described in a paper may be saved in Turkey, but the same disclosure can close the European route.

Below we look at why the novelty requirement is so strict, the grace period rules of the three systems, which kinds of sharing count as disclosure, a safe-sharing protocol and the steps to take if a disclosure has already been made.

Why Does Disclosure Destroy Novelty?

Patents are granted only for new inventions, and novelty is assessed on a worldwide basis. Under SMK Art. 83(2), the state of the art covers everything made available to the public anywhere in the world before the filing date by means of a written or oral description, by use or in any other way. Who made the disclosure does not matter in this definition: the inventor's own presentation also becomes part of the state of the art.

The decisive test is being "available to the public." Even if the audience is small, a disclosure to people who are under no obligation of confidentiality can be regarded as such. By contrast, sharing under an obligation of confidentiality is, as a rule, not a public disclosure. We explained all of the patentability requirements and the steps of filing in our patent application guide; here we focus only on the question of disclosure.

Turkey: A 12-Month Grace Period under SMK Art. 84

A grace period is the period during which certain disclosures made before filing are not taken into account in assessing novelty. Under SMK Art. 84(1), the following disclosures made within the 12 months before the filing date, or before the priority date if priority is claimed, do not affect the grant of a patent or utility model:

• A disclosure made by the inventor themselves (Art. 84(1)(a)).
• Disclosure by an office with which a patent application was filed of an application it should not have disclosed, or of an unauthorized application filed by a third party who obtained information from the inventor (Art. 84(1)(b)).
• A disclosure by a third party who obtained information directly or indirectly from the inventor (Art. 84(1)(c)).

Anyone who holds the right to apply for a patent on the filing date is deemed to be the inventor (Art. 84(2)); for this reason, an employer or company that has acquired the right also benefits from the provision. The effects of the provision are not subject to a time limit and can be invoked at any time (Art. 84(3)), but the burden of proving that the conditions are met lies with the party relying on them (Art. 84(4)). Keeping documents that show the date and content of the disclosure and to whom it was made is therefore vital.

Exhibition priority

The SMK also provides a separate tool for exhibitions. A person who displays a product at national or international exhibitions held in Turkey, or at official or officially recognized international exhibitions in countries party to the Paris Convention, benefits from a right of priority for an application in Turkey within 12 months of the date of display (Art. 93(6)). Keep in mind that not every trade fair qualifies.

The same grace period also applies to utility model applications; although inventive step is not required for a utility model, the novelty requirement is the same as for patents. So the thought "I'll switch to a utility model" does not make up for a disclosure made more than 12 months earlier.

Europe: No General Grace Period, Only Two Exceptions

Under Article 54 of the European Patent Convention (EPC), to which Turkey is also a party, the state of the art comprises everything made available to the public by means of a written or oral description, by use or in any other way before the date of filing of the European patent application. EPC Art. 55 recognizes only two narrow exceptions to this rule: where the disclosure took place no earlier than six months before filing and was due either to an evident abuse in relation to the applicant, or to the applicant's display of the invention at an official or officially recognized international exhibition within the terms of the 1928 Paris Convention on International Exhibitions. The exhibition exception requires a declaration at the time of filing and a certificate to be submitted in time.

The European Patent Office's (EPO) Guidelines for Examination add two important details: the six-month period is counted back from the actual filing date of the European application, not from the priority date; and for evident abuse, the person making the disclosure must have intended to cause harm, or must have known or should have known that harm would result. The inventor's own conference presentation, paper or trade fair booth does not fall within these exceptions.

Priority does not change this picture either. If you file in Europe, or through the PCT route, within 12 months claiming priority from your Turkish application, disclosures made after the priority date do not destroy novelty. But if the disclosure was made before the Turkish application, priority does not cover it: the disclosure remains part of the state of the art for Europe, and because the six-month exception is counted from the actual European filing date, it has usually expired long before.

The upshot is this: an application saved in Turkey thanks to SMK Art. 84 does not save a European patent for the same invention, which could also cover Turkey.

The US: A 1-Year Grace Period

In the US, 35 U.S.C. 102(b)(1) excludes from the prior art a disclosure made 1 year or less before the effective filing date by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from them. A third party's disclosure of the same subject matter after the inventor's own public disclosure also benefits from this protection under certain conditions. In other countries, the rule depends on that country's own law; each of your target markets should be checked separately.

Which Kinds of Sharing Count as Disclosure?

The rule is simple: any setting in which someone without an obligation of confidentiality can learn how the invention works is risky. Common situations:

Sharing with suppliers and contract manufacturers carries a separate risk: a technical drawing sent to obtain a quote can also reach the manufacturer's other customers if there is no obligation of confidentiality. For molds and samples, put the confidentiality clause not in the purchase order but in a contract signed before the work begins. Whether a disclosure reached the public is often disputed after the fact; the way to win that dispute is to be able to show, with documents, that the sharing took place under confidentiality.

Sharing Under Confidentiality

If you need to talk to a manufacturer, partner or investor before filing, share the information under a written obligation of confidentiality. We covered the terms of a confidentiality agreement in our article on NDAs; the practical points for an invention are these: have the agreement signed before any information is shared, mark the documents you hand over as "confidential," and keep a record of what you gave to whom and on what date.

Investors often refuse to sign an NDA at first meetings. In that case, explain what the invention does, its market and its results; keep how it works, meaning the technical solution that will go into the description, to yourself until you file. Showing the pitch deck in the meeting and taking it back, rather than leaving it by email, also keeps the documents you hand over to a minimum; every file you send is a copy that can reach others outside your control. For a general map of which tool protects an idea at which stage, see our guide to protecting an idea.

The "File First, Talk Later" Protocol

For teams with a known disclosure calendar, the following sequence is safe:

1. Map out the calendar: Gather the dates of trade fairs, conference abstracts, paper submissions, thesis submission, investor demo days and campaign launches in a single list.
2. File before the first date: The description must disclose the invention clearly enough for a person skilled in the art to carry it out; the application cannot later be amended beyond the content of the application as filed (Art. 103(1)).
3. Compare the content with the description: If a presentation or paper contains a feature that is not in the application, either remove it or file an additional application first.
4. Set up the foreign filing calendar: A Turkish application provides 12 months of priority in countries party to the Paris Convention (Art. 93(1)). Because the priority date has the effect of the filing date for novelty purposes (Art. 93(7)), foreign applications claiming priority are not affected by your later promotion.
5. Require publication approval: Make it a rule within the company or university that technical publications are cleared by the person responsible for patents.

Additional Rules for Academics and Publicly Funded Projects

In academia, publication pressure is what most often clashes with the patent calendar. Under SMK Art. 121(2), when an invention results from scientific work carried out at a higher education institution, the inventor is obliged to notify the institution in writing and without delay. This notification should be made before the paper is submitted to a journal; the university's technology transfer office can make a filing decision only after the notification.

In projects funded by public bodies, the rule is even clearer. Under SMK Art. 122(1), an invention arising in the project is notified to the funding body, and the person benefiting from the project funding may not make disclosures that would affect the grant of a patent or utility model for the invention until the ownership process is completed. Plan the calendar for project reports, interim presentations and closing meetings around this obligation.

What to Do If You Have Already Disclosed

What you need is a quick inventory, not panic:

1. Establish the facts: Document what was disclosed, on what date, in what setting and to whom; keep evidence such as the presentation file, recordings and attendee lists.
2. Calculate the deadline: Work out how much of the 12 months remains for Turkey, and file as soon as possible.
3. Separate what was not disclosed: Improvements not included in the presentation may still be new; however, inventive step will be assessed separately against the disclosed content.
4. Choose the countries again: If none of the exceptions applies in Europe, that route is largely closed; check the deadlines for the US and other targets separately.
5. Handle unauthorized disclosure separately: If someone who learned about your invention from you disclosed it without authorization, assess your rights under both SMK Art. 84(1)(c) and the confidentiality agreement.

Fictional Example: Lunaria Medikal

Fictional example: Lunaria Medikal displays the prototype of a new infusion connector at an industry trade fair in Istanbul and decides five months later to file a patent application. In Turkey, because this was the inventor's own disclosure, an application is still possible under SMK Art. 84; the company needs to keep the trade fair photographs and catalog as evidence. In Europe, however, if the fair is not an officially recognized international exhibition, the exception does not apply; the prototype has become part of the state of the art. In the US, an application can be filed within the 1-year period. By adding a sealing improvement that was not shown at the fair to the same application, the company obtains a stronger position for that part.

Common Mistakes

• Treating the grace period as a plan: The 12-month period is a rescue tool; it cannot be a strategy for anyone targeting Europe.
• Forgetting the abstract book: The decisive date may be when the abstract is published, not the day of the conference.
• Not keeping evidence: The burden of proof is on you; an undated presentation file is of no use.
• Describing what is not in the application: A new feature added after filing does not benefit from the protection the application provides.
• Not informing the team: A well-meant post by an intern, consultant or the marketing team is also a disclosure; announce in writing who may share what until the application is filed.
• Overlooking grant and competition summaries: The project summary in an application form may be published; do not put the technical solution in the summary.

If you will be sharing the appearance of a product rather than an invention, the rules are different; we covered this in our article on sharing a product before design registration. To gauge whether the invention is actually new before filing, see our guide comparing the types of patent search.

If your disclosure calendar is set, or a disclosure has already been made, at Webx we first clarify the deadlines and target countries with you, and then the scope of the application, as part of the patent registration process.

Sources

• Legislation Information System — Industrial Property Law No. 6769 (SMK) (Arts. 83, 84, 93, 103)
• EPO — European Patent Convention, Article 54: Novelty
• EPO — European Patent Convention, Article 55: Non-prejudicial disclosures
• EPO — Guidelines for Examination, Part G, Chapter V: Non-prejudicial disclosures (calculation of the period and evident abuse)
• USPTO — MPEP 2152: Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)