What is public disclosure

[tryagain]

I am looking at filing a PPA. In the meantime I have prospective customer expressing interest in the product that will be based on it and wants to test the prototype. I will use an example to describe my product which is a method used in conjunction with a specific machine. Let's say I came up with a method to improve the GPS accuracy in cell phones substantially that is based on an algorithm. If I provide the software application that demonstrates the effectiveness of the method to a company to test on their cell phones am I committing public disclosure before filing the PPA? In other words

1) if I just demonstrate the effectiveness of the device without disclosing the actual method, is this really a disclosure? What if I just demo the operation on my phone? In this case the prototype is really a black-box as the software is in object form and not human readable.

2) is there one year rule? I read somewhere that if I (the inventor) am making the disclosure, or even start selling products based on it, and file within a year there is no violation. Is this true for international patents as well?

3) if I ask the company in question to sign NDA am I safe to provide a prototype for them to test?

Thanks!

[Brad]

This is a good question and there is not really a clear answer.  Every year or two there is some big court case that changes the ball game and what we thought was a "public disclosure" last year may or may not be a "public disclosure" next year.

Very broadly speaking, anything that the public could have easy access to will count a public disclosure so posting an app in the app store or putting it on your website (even if it was buried or hard to find) would count as a public disclosure.   Letting one company test it and making sure (in writing) that they new it was confidential and they could not share it should not be considered a public disclosure.  This is why a NDA is very important before you file your patent.   In response to your questions:

1) This is a grey area.  Sometimes demonstrating it in the public without actually showing the "secret sauce" may jeopardize some patent rights.  I would be careful here.

2) There is a 1-year grace period for the inventor in the US only.  Most countries don't have that grace period. 

3) A NDA would be your best bet since that makes it clear you do not intend this to be a public disclosure.

Also, there is something called an "on-sale bar" which is just like a public disclosure.  If you sell your product or even offer it for sale that may jeopardize your patent rights so be careful not to talk about payments or pricing until you get your patent filed first. 

[Jerry Collette]

If you sell your product or even offer it for sale that may jeopardize your patent rights so be careful not to talk about payments or pricing until you get your patent filed first.

Brad, do you mean until the regular patent is filed, or the provisional?

Thanks.

[Brad]

Either.  You should file either a provisional or a full non-provisional prior to any sale or public disclosure of your idea.