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  1. #1
    Join Date
    May 2007
    Posts
    21

    Question Provisional Patent Application and Inventor Logbook - Invention Protection

    Hi,

    I'm currently working on a product idea I have, and I'm trying to fully understand how a "provisional patent application" and "inventor log book" can protect my product idea from other companies trying to patent or sell my product idea.

    Based on my research online this is the information I currently have been able to gather regarding this topic:

    If I apply for a "provisional patent application (PPA)", after a "public disclosure/sale offer" occurs I have a 1 year grace period to apply for a "non-provisional patent application (NPA)".

    However, if I don't apply for an NPA and my PPA expires after the 1 year grace period then this counts as a "bar to patenting" and I will no longer be able to patent my product idea; right??

    1. So if the above situation counts as a "bar to patenting" my product idea; I will never be able to patent my idea, and no company or any other person will ever be able to patent my product idea as well, due to "public disclosure/sale offer"??

    If this is true, then I guess I can see this as a proand a con. For a pro, at least I know that no one or company could ever try patenting my product idea, but as a con I will also never be able to patent my product idea as well.

    2. To avoid the above situation from occurring; can I "public disclose/sale offer" my product idea to a company to see if they want to license my idea without having a PPA or NPA filed, but having a properly kept "inventor log book" instead??

    For example, can a properly kept "inventor log book"; which contains detailed information regarding my product idea, signed, dated, and also have a witness sign it be enough for court if a company tries to patent or sell my product idea??

    However, after re-reading my question number 2; even if I didn't have a PPA or NPA there is still "public disclosure/sale offer" occurring so this would again only give me a 1 year grace period before a "bar to patenting" occurs; right??

    I guess the only difference in my question 2 is that I would save money by not submitting a PPA.

    3. If the above is true, then what is my best option to protect my product idea, but at the same time still be able to contact companies to see if they are interested in "licensing" my product without receiving a "bar to patent" after 1 year due to "public disclosure/sale offer"??

    Thank you,

    olimits7

  2. #2
    Join Date
    Mar 2009
    Location
    Key West, FL
    Posts
    2,350

    Default Re: Provisional Patent Application and Inventor Logbook - Invention Protection

    Virtually no company will consider your idea if it is not patented.

    Unfortunately, and you can thank Congress, the USPTO is FIVE YEARS behind. It takes five years to get a patent.

  3. #3
    Join Date
    Sep 2005
    Location
    Behind a Desk
    Posts
    98,846

    Default Re: Provisional Patent Application and Inventor Logbook - Invention Protection

    If you make your invention "prior art", no company will be able to obtain a patent for the same invention because it already exists. You can only get a patent for an innovation and, if the original inventor chooses to make the invention part of the public domain rather than seeking a patent, it's fair game for anybody to use.

    It is going to be very difficult to market an invention that is not patented, as the patent application may fail. Also, most companies prefer to develop their innovations in-house so that they can control the development of ideas and be sure that they're not going to end up facing third party claims (e.g., "some guy" comes along and claims you stole his idea).

    Knowing nothing about your invention, it's difficult for anybody here to guess how interested companies in the field would be with acquiring or developing it. There are plenty of inventors who expend the considerable sum necessary to obtain a defensible patent only to find out that companies aren't interested in it, or that they like the idea but prefer to develop their own alternative version that doesn't require them to pay royalties or buy your parent.

  4. #4
    Join Date
    May 2007
    Posts
    21

    Default Re: Provisional Patent Application and Inventor Logbook - Invention Protection

    Hi,

    Thank you for your reply...

    Yes, that's one of the things I'm worried about. I don't want to spend the money on getting a patent issued, and then find out that no companies are interested in my product invention.

    That's why I was thinking that taking the "provisional patent application" route would save me a lot of money, but at the same time will allow me to place "patent pending" on my product idea when I reach out to companies.

    Thank you,

    olimits7

  5. #5

    Default Re: Provisional Patent Application and Inventor Logbook - Invention Protection

    You are not quite correct about how the statutory bar works.

    Your public disclosure / offer for sale sets the clock ticking for you. It means that you have a year to get the PPA or NPA on file. As you correctly point out, if you go the PPA route, then you have a year to get the NPA on file.

    Where you are incorrect is your understanding that your public disclosure / offer for sale is considered as prior art. Rather, your disclosure to a potential buyer of your technology sort of creates prior art and sort of doesn't. Here is what I mean:

    (i) if the person(s) you disclose to want to take your idea and patent it, then they can't because that would be "derivation" -- with respect to the persons you disclose to, your idea is prior art; but

    (ii) with respect to all the preson(s) you did not disclose to (that is, most of the world) your disclosure to the potential licensee is NOT prior art -- in order for you to make prior art with respect to strangers, you need to "publish" your idea -- this is called defensive publication -- probably the cheapest effective way to do this is by publish you idea on an Internet blog (although the defensive publication status of Internet blogs has not been fully tested in the courts because the Internet is so new, relatively speaking).

    You are not going to want to talk to companies about licensing without having a patent application on file first, before you talk. The main reason for this is that a company that wants to exploit your idea, but not cut you in on the profits, will generally not simply take your idea verbatim and apply it (eg, in a commercial product, in a patent application of their own). Rather, they will make changes and modifications to your idea. They will claim that the changes and modifications are the real "invention" and that the things you told them are useless and trivial and stuff they knew already before you talked to them. Depending upon how much they can make changes / improvements to your specific disclosure they may get away with it. Look at it this way: (i) getting your patent will cost $15,000; but (ii) convincing a company to cut you in on profits from a successful product that they stole from you is going to cost hundreds of thousands of dollars at least (because it is going to involve a litigation against a determined and prepared adversary).

    By the way, this idea of the potential licensee taking your idea and changing it to try to cut you out brings up what the value of the patent lawyer is. If the patent lawyer is good, she is going to spend her billable time trying to figure out changes that your potential licensee will make to your idea before they make them. If the patent application can envision the changes before they are made, then the patent application can be written to reliably cover those changes. This "broadening" of the definition of your invention, beyond what is literally shown in your inventor logbook, is the main thing that a patent attorney earns her $5,000 in fees for.

  6. #6

    Default Re: Provisional Patent Application and Inventor Logbook - Invention Protection

    Quote Quoting olimits7
    View Post
    Hi,

    I'm currently working on a product idea I have, and I'm trying to fully understand how a "provisional patent application" and "inventor log book" can protect my product idea from other companies trying to patent or sell my product idea.

    Based on my research online this is the information I currently have been able to gather regarding this topic:

    If I apply for a "provisional patent application (PPA)", after a "public disclosure/sale offer" occurs I have a 1 year grace period to apply for a "non-provisional patent application (NPA)".

    However, if I don't apply for an NPA and my PPA expires after the 1 year grace period then this counts as a "bar to patenting" and I will no longer be able to patent my product idea; right??

    1. So if the above situation counts as a "bar to patenting" my product idea; I will never be able to patent my idea, and no company or any other person will ever be able to patent my product idea as well, due to "public disclosure/sale offer"??

    If this is true, then I guess I can see this as a proand a con. For a pro, at least I know that no one or company could ever try patenting my product idea, but as a con I will also never be able to patent my product idea as well.

    2. To avoid the above situation from occurring; can I "public disclose/sale offer" my product idea to a company to see if they want to license my idea without having a PPA or NPA filed, but having a properly kept "inventor log book" instead??

    For example, can a properly kept "inventor log book"; which contains detailed information regarding my product idea, signed, dated, and also have a witness sign it be enough for court if a company tries to patent or sell my product idea??

    However, after re-reading my question number 2; even if I didn't have a PPA or NPA there is still "public disclosure/sale offer" occurring so this would again only give me a 1 year grace period before a "bar to patenting" occurs; right??

    I guess the only difference in my question 2 is that I would save money by not submitting a PPA.

    3. If the above is true, then what is my best option to protect my product idea, but at the same time still be able to contact companies to see if they are interested in "licensing" my product without receiving a "bar to patent" after 1 year due to "public disclosure/sale offer"??

    Thank you,

    olimits7
    You are not quite correct about how the statutory bar works.

    Your public disclosure / offer for sale sets the clock ticking for you. It means that you have a year to get the PPA or NPA on file. As you correctly point out, if you go the PPA route, then you have a year to get the NPA on file.

    Where you are incorrect is your understanding that your public disclosure / offer for sale is considered as prior art. Rather, your disclosure to a potential buyer of your technology sort of creates prior art and sort of doesn't. Here is what I mean:

    (i) if the person(s) you disclose to want to take your idea and patent it, then they can't because that would be "derivation" -- with respect to the persons you disclose to, your idea is prior art; but

    (ii) with respect to all the preson(s) you did not disclose to (that is, most of the world) your disclosure to the potential licensee is NOT prior art -- in order for you to make prior art with respect to strangers, you need to "publish" your idea -- this is called defensive publication -- probably the cheapest effective way to do this is by publish you idea on an Internet blog (although the defensive publication status of Internet blogs has not been fully tested in the courts because the Internet is so new, relatively speaking).

    You are not going to want to talk to companies about licensing without having a patent application on file first, before you talk. The main reason for this is that a company that wants to exploit your idea, but not cut you in on the profits, will generally not simply take your idea verbatim and apply it (eg, in a commercial product, in a patent application of their own). Rather, they will make changes and modifications to your idea. They will claim that the changes and modifications are the real "invention" and that the things you told them are useless and trivial and stuff they knew already before you talked to them. Depending upon how much they can make changes / improvements to your specific disclosure they may get away with it. Look at it this way: (i) getting your patent will cost $15,000; but (ii) convincing a company to cut you in on profits from a successful product that they stole from you is going to cost hundreds of thousands of dollars at least (because it is going to involve a litigation against a determined and prepared adversary).

    By the way, this idea of the potential licensee taking your idea and changing it to try to cut you out brings up what the value of the patent lawyer is. If the patent lawyer is good, she is going to spend her billable time trying to figure out changes that your potential licensee will make to your idea before they make them. If the patent application can envision the changes before they are made, then the patent application can be written to reliably cover those changes. This "broadening" of the definition of your invention, beyond what is literally shown in your inventor logbook, is the main thing that a patent attorney earns her $5,000 in fees for.

  7. #7
    Join Date
    Mar 2009
    Location
    Key West, FL
    Posts
    2,350

    Default Re: Provisional Patent Application and Inventor Logbook - Invention Protection

    We in lawyer land call this claims construction.

    The claims of the patent are the tricky part. Also, legally, someone has to be able to make your invention from the information in the patent.

    In addition to paying a patent lawyer, you will also pay through that lawyer, or perhaps directly, for the patent searches to make certain your idea is not already patented.

    Your applications also requires drawings and I don't mean what you can come up with on the kitchen table. The more complicated the invention, the more expensive the drawings will be. If you have already designed it on a cad/cam system that will certainly make the drawings easier to produce.

    Of course, there are a very wide range of inventions from single pieces of plastic to designs with mechanical and electrical engineering.

    The 3k filing fee will be the least of your costs and the current wait time is five years unless Congress gets off their buttcheeks fast and does something, but it will still take a couple of years to train new examiners.

    Even if you hire a patent attorney it would be worthwhile to read books like "Patent It Yourself" from Nolo Press and others.

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