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-Brig. Gen. Raymond C. Preston, Jr., USAF (Retired)
aka “Dear Olde Dad”

When can you begin your marketing, advertising, and perhaps brag about your efforts as to new technologies and other protectable endeavors progress? Simply put, after initial filings are made for protections such as patents, trademarks, and copyrights. By far the most important filings to be made prior to public disclosures, or possibly any disclosures even under confidentiality provisions and agreements, are patent filings.

Under the “first to file” rules not in effect in the US, disclosures/use/public availability/sales/offers for sale/etc. prior to filing a patent application can greatly and negatively impact the availability of patent protection for your technologies. Thus, be mindful to think a bit before disclosing anything relating to your technologies to anyone. See, for example, 35 USC 102.

Generally, many practitioners recommend filing at least a provisional patent application before any disclosures are made, even under confidentiality, and then making disclosures under a Confidential Disclosure Agreement (CDA) or Non-Disclosure Agreement (NDA) in order to 1) establish a priority date with the provisional application filing, 2) have documentation of dates of conception and reduction to practice of the invention, 3) have evidence of a date certain for materials filed, 4) allow moving forward under confidentiality agreements that have a relatively strong evidentiary basis rather than hearsay, 5) a variety of other reasons beyond this writing.

The purpose of a disclosure should also be considered before making statements. Mere bragging and puffery may not be enough justification to tell the world from the hilltops of your greatness when balanced against the overall risks of disclosure. Business is after all in some ways an analysis of risk and balancing of costs and benefits of every decision.

May 26, 2017

Disclaimer: The materials provided on this website are for general information and educational purposes only and are not intended as, and should not be taken as, legal advice or the formation of an attorney/client relationship. Individuals and entities having intellectual property issues should consult with a patent attorney or patent agent to fully address intellectual property law matters based on an analysis of the particular facts. The attorney members of the firm are licensed to practice law in the state of California, and otherwise as noted.