PUBLIC DISCLOSURES: TECHNICAL TRIALS

Inventors often face the dilemma of having to disclose an invention to move a project forward. At some point the inventor will hopefully have a pre-production sample ready, and may wish to test the product.

In the IP field this causes lots of alarm bells to sound – absolute novelty is typically required and public disclosure destroys novelty.

The good news is there are options to avoid these fatal consequences.

One of these options is the provision for reasonable technical trials that is inherent to most patent or design legislation. This allows such trials to be conducted without fear of destroying the novelty of the invention.

As the name implies it should actually be a technical trial, aimed at determining whether a product performs in line with its design and delivers the intended technical outcome. Of course, the facts have to support this. For example, testing the product in the market to determine its market acceptance most likely will not pass muster as a technical trial.

Pertinently, if a prior public disclosure becomes an issue it will likely only happen years after the fact. This can be expected to form part of a defence raised during enforcement of the relevant IP right, on the basis that the IP right lacks novelty due to premature public disclosure. It may be difficult to refute evidence of such a public disclosure.

Also, it is tempting to recoup during technical trials capital investment into a product’s development. It would arguably be permissible to recover costs associated with conducting the trial, but no more. Once profit is generated from a trial it will almost assuredly be deemed to amount to commercial exploitation of the product. This can be expected to prevent the technical trial exception from being applicable to such public disclosure, again with fatal consequences for the IP protection.

It is therefore prudent to set out the terms of the technical trial when it is conducted, including noting the results that the testing aims to collect, the period over which it will be conducted, the costs that will be recovered for it, actually collecting the results, and using it (if it is useful).

A term sheet or record for the trial must be completed by the person making the disclosure and accepted by the person or on behalf of the entity that will be involved with the trial. For good measure, the term sheet can also include confidentiality provisions.

All records relating to the technical trial should be kept. Preferably, copies of these records should be provided to the IP attorney handling registration of the IP right for safe keeping, and easy reference if later required.