The Patent Act exhaustively sets out the conditions of patentability of inventions, which must mandatorily meet the requirement of novelty and industrial applicability, must be the result of inventive activity and must also come from the field of technology. It is precisely the obligation to meet the requirement of novelty that means the owners of inventions are not entitled to disclose the invention in any way. As soon as an invention is disclosed, it becomes part of the so-called state of the art and is no longer regarded as new. It is immaterial where and in what manner the invention was disclosed, since under the law the state of the art comprises everything that was made available to the public in any way, anywhere, before the date of filing of the patent application.
The only exception under the Patent Act is a disclosure made within the 6 months preceding the filing of the patent application and which was at the same time made either as a consequence of evident abuse in relation to the applicant or their predecessor, or by disclosure at an officially recognised exhibition under international law. Since this exception covers, in fact, very specific situations, the standard disclosure of an invention on the internet or at a conference, for example as part of promoting a product or a business plan, cannot be regarded as satisfying the conditions for applying the exception. What can be done in such a case?
The owner of the invention then has two options. Either they decide not to register the invention, which, of course, in some cases may not be a bad solution. The option of not registering the invention is chosen, for example, where a particular invention is likely to retain its value even after 20 years have elapsed from the filing of the application. The reason is that when a patent application is filed, the essence of the invention, including its complete description enabling it to be reproduced, is disclosed in the register to anyone. Since patent protection lapses after 20 years, the public then has a set of instructions for reproducing the now unprotected invention. It should be noted, however, that such an option is recommended for those owners of inventions who will be able, for the said period, to keep the essence of the invention secret in such a way that third parties are not able to reproduce it.
If, however, the owner of the invention is interested in legal protection for it, the legislation makes it possible to obtain protection even where the invention has been disclosed, by means of a utility model. A utility model is an alternative to patent protection, and to a large extent the rules and conditions for its grant are identical to the characteristics of a patent.
In general it can be said that this is a somewhat less demanding procedure, both as regards the conditions for obtaining a utility model and the procedural proceedings for its grant. The main differences include, for example, the term of protection, which for patents is 20 years and for utility models 10 years. The costs of obtaining protection are likewise lower, as are the maintenance fees, which, for a protection period of 4 years for example, are approximately 10 times lower.
As with patents, an invention protected by a utility model must, among other things, meet the requirement of novelty. The novelty exception for utility models is, however, defined much more broadly than for patents: an invention is also regarded as new where it was disclosed within the 6 months preceding the day on which the utility model application was filed. Apart from the condition of managing to file the utility model application within 6 months of its disclosure, the law attaches no further condition to preserving the status of novelty, which opens up the possibility of obtaining protection for any disclosed invention to which this form of protection may be granted.
Inventors therefore need not despair after disclosing their inventions. In order to meet the 6-month time limit, however, it is essential to think through the strategy as soon as possible: combining the legal and formal requirements of a utility model application together with a proper technical description is not a simple process and requires precise work and time.