How does the presence or absence of a confidentiality agreement affect public use determinations?

The presence or absence of a confidentiality agreement is a factor in determining public use under pre-AIA 35 U.S.C. 102(b), but it is not dispositive. The MPEP states:

“The presence or absence of a confidentiality agreement is not dispositive of the public use issue, but ‘is one factor to be considered in assessing all the evidence.'”

(MPEP 2133.03(a))

Courts consider confidentiality agreements as part of a broader analysis that includes:

• The nature of the activity that occurred in public
• Public access to and knowledge of the public use
• Whether there were any confidentiality obligations imposed on persons who observed the use
• The policies underlying the public use bar, such as discouraging removal of inventions from the public domain and promoting prompt disclosure of inventions

For example, in Bernhardt, L.L.C. v. Collezione Europa USA, Inc., the court considered factors such as restricted access to an exhibition, security measures, and limitations on attendees’ ability to take notes or photographs, in addition to the presence or absence of confidentiality agreements.

Therefore, while a confidentiality agreement can be evidence against public use, it is not conclusive, and its absence does not automatically mean there was public use. The determination depends on the totality of the circumstances surrounding the use of the invention.

To learn more:

• confidentiality agreement
• public use
• pre-AIA 35 U.S.C. 102(b)
• patent bar