One of the regular questions we get from entrepreneurs relates to this apparent conflict. On the one hand, they want to talk up their innovations to potential investors, team member candidates and other audiences. But they are told that disclosure of the invention can ruin their chance to get a patent protecting it.

In a nutshell, this is because a patent is a reward given to an inventor by the government, in the form of a temporary monopoly on the invention, for teaching the world how to practice the invention. Thus, patentability requires, among other things, that the invention be “novel” when you file for protection. If people already know how to practice the invention, there is no reason for the government to reward you for showing them. So any “public disclosure” of your invention makes it, literally, old news, or in patent terms, “prior art.”   The effect of public disclosure differs by country. The U.S. is actually one of the jurisdictions more forgiving of early public disclosure. Europe, commonly seen as an important territory to protect, is probably the toughest.

For this reason, you are best protected if you file a patent application properly covering your invention before you start telling people about it. For a number of reasons, though, inventors may not want to file or may not be able to afford to file an application early in the process. The next best protection is to get anyone to whom you want to describe your invention to sign a non-disclosure agreement. Disclosure to someone who is under an obligation of confidentiality is generally not a bar to patent protection (though certain other activities, such as selling or even just offering to sell a product embodying the invention can bar patent protection even if done under an obligation of confidentiality). 

However, many professional investors, i.e., VCs and experienced angel investors, will not sign NDAs, especially early in the process. This practice is not guided by any sinister purpose-- they simply see so many similar and competing ideas, often preliminary and sometimes vaguely articulated -- that they are leery of being drawn into a dispute over the provenance of the ideas that they do decide to fund.

This poses a somewhat obvious conundrum, as these potential investors are the ones to whom you most want to talk, and your innovation is what you want to tell them about (and about which they presumably want to know). And saying “I have come up with a great invention, but I can't tell you what it is” is not likely to move the conversation along to the next level, or get you a business card from the investor.

What, then? One answer is that not every disclosure about your invention is necessarily a bar to patent protection.  To qualify as prior art, the disclosure must be an “enabling disclosure” -- i.e., it must enable a person who is “skilled in the art” to make the invention without undue experimentation. Thus, if appropriate, you may be able to rehearse a brief, non-enabling description of the invention -- which has been reviewed and blessed by patent counsel -- to describe what it is that you have invented. Use this in any networking conversation or investor presentation. You can try to stimulate interest in your idea without making it prior art, and by rehearsing what to say, you will be less likely to become tongue-tied or stumble into over-disclosure.

To summarize: the best protection against premature disclosure is to file an enabling patent application that teaches your invention. The next is to place the recipient of your disclosure under an obligation of confidentiality. Finally, in a circumstance where neither of those two options is available, you might be able to make a “non-enabling” disclosure of the invention.

It bears repeating, though, that you should first clear whatever you want to say with qualified counsel who understands the technology enough to discern whether your disclosure would enable someone “skilled in the art” to reproduce your invention. The penalty for early public disclosure is too harsh to take chances with.