Patent and Invention Help Forum

Patent and Inventing Discussion => Patent Questions and Advice => Topic started by: Cruisingcat on February 04, 2022, 02:52:57 PM

Title: Can inventor with Pat Pending edit claims to read on newly disclosed inventions?
Post by: Cruisingcat on February 04, 2022, 02:52:57 PM
I have applied for a patent for an invention which is an improvement of existing prior art. Since it is not important for me to make money I’m thinking about giving away this invention by disclosing it on the web.

I have found that another inventor has applied for a patent for a similar invention a few years earlier but his published claims do not necessarily read on my new invention.

However, I’m worried that if I disclose my invention and this inventor sees my disclosure before his application is granted, he may be able to change his claims by describing some existing parts differently to read on my invention to prevent other people from building or using my invention.

If it is possible for him to do this then it would make more sense for me to wait until after his patent is issued before disclosing my invention but then the industry would lose out having to wait longer to build and use my invention.

TIA
Title: Re: Can inventor with Pat Pending edit claims to read on newly disclosed inventions?
Post by: Brad on February 04, 2022, 03:46:02 PM
Yes that is a tough decision.   When someone has a pending patent application it is smart for them to change the claims to try and capture the best commercial use of their idea.

How likely is it that the inventor will see your idea online?  It is a big world with a big internet and I have found most inventors are not very good at finding similar ideas online.  Sometimes they are scared to look, sometimes they don't know how to do good searches on Google. 

You will need to decide what is more important:
1. Publishing now to give the idea way as soon as possible, or
2. Waiting for the other patent to be approved.

 Note that there is a good chance their patent may never get approved so maybe option 1 is best.
Title: Re: Can inventor with Pat Pending edit claims to read on newly disclosed inventions?
Post by: Cruisingcat on February 05, 2022, 04:59:35 AM
Thanks Brad.

Another thing I can do is to start building a prototype without disclosing it to the public. If I file my RPA or non-provisional application and foreign applications as late as possible it will be more than a year before my RPA gets published. Then hopefully by that time it will be too late for the other inventor to change his claims and I'll have my prototype ready to show to the world.

Update February 5, 2022

I just discovered https://globaldossier.uspto.gov/ and was able to see the EP's WRITTEN OPINION OF THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY from 2020 showing their objection to all of this inventor's claims.

I also saw that the actual EP's examination had just started last month but don't know how long this will take. I do not think this inventor has filed an application for this invention in the US even though he has done this for his other inventions.
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