Recent Posts

1

Patent Questions and Advice / Re: Back-dated NDA to cover previous invention disclosure private conversation

« Last post by Brad on August 24, 2022, 09:25:28 AM »

Private conversations with friends and family is NOT a public disclsure.   If the public was not invited or able to attend these conversations they are not public.

An example of a public disclosure would be pitching your idea on Shark Tank or presenting your idea at a conference. 

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Patent Questions and Advice / Re: Expired patents

« Last post by Brad on July 28, 2022, 11:55:10 AM »

In general once a patent expires it is free for anyone to use and there is no way to "obtain" it.   Its essentially dedicated to the public at that point.

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Patent Questions and Advice / Expired patents

« Last post by Bigsur22 on July 28, 2022, 07:18:19 AM »

Once a patent expires what are my options to obtain the expired patent and also protect my newly obtained patent?

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Patent Questions and Advice / Back-dated NDA to cover previous invention disclosure private conversation

« Last post by gmovies on July 23, 2022, 04:45:18 PM »

Hello I have disclosed some but not all details of a potential invention to one friend during private conversations and both of my parents during another private conversation. As I understand this constitutes a public disclosure and precludes my ability to patent my invention due to the conversations happening more than 12 months ago. I'm trying to think of ways to recover my ability to patent my invention.

1) If I obtain a back-dated NDA from each party will this restore my ability to patent?

2) Could I somehow claim I was describing the invention with the intent to eventually seek investment funds from my friend and parents? I can imagine discussion with potential designers, engineers, manufacturers, and investors have an implied confidentiality.

3) If I file a patent application that includes disclosed innovations plus innovations beyond what I have disclosed will that cover me?

Thanks!

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Marketing, Licensing, and Selling an Invention / Re: My patent was granted by USPTO EFS-Web electronic.

« Last post by Brad on July 15, 2022, 09:29:54 AM »

A patent does not give you permission to make or sell your product.   A patent is a defensive tool that lets you stop other people from copying you.  Please read this:   https://patentfile.org/your-patent-is-not-a-green-light-to-sell-a-product/

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Marketing, Licensing, and Selling an Invention / My patent was granted by USPTO EFS-Web electronic.

« Last post by daviddesign on July 14, 2022, 03:51:18 PM »

My patent was granted by USPTO EFS-Web electronic.

Can a patented product be produced now?

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Patent Questions and Advice / Re: PPA Application

« Last post by Louis on June 02, 2022, 12:35:26 AM »

Hi Brad

Much appreciated for the clarification.

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Patent Questions and Advice / Re: PPA Application

« Last post by Brad on June 01, 2022, 10:43:15 AM »

Hi Louis,

I think there are few big misunderstandings on your part.  I am not trying to "upsell" you here but I think a $150 consultation with me or another qualified person would be beneficial to help walk you through different strategies and ideas based on your goals.  It is a complex process with many potential pathways.     

The biggest thing is that a patent application or even a fully issued patent does not give you permission to sell anything.  It is a defensive tool used to stop others.  That is a huge difference that most people don't realize.   Just because you file your patent first does not mean you have some clearance to launch a product.   See this post here:  https://patentfile.org/your-patent-is-not-a-green-light-to-sell-a-product/  and this one  https://patentfile.org/you-have-a-patent-so-what/


The main reason you would file your PPA is to lock on your priority date.  You full (non-provisional) can then link back to your provisional.  Because the upfront cost of the PPA is so much less, if done properly, a PPA can be extremely powerful for relatively little cost.    In one example, lets say you file a good PPA for $2,000.   Ten months later your competition files a full non-provisional using an expensive Boston law firm for $15,000.   You later file your non-provisional and link it back to your provisional.   Because your applications have an earlier priority date (based on your PPA date), you can block the other company from getting their patent approved because you have the earlier date.   

9

Patent Questions and Advice / PPA Application

« Last post by Louis on June 01, 2022, 07:51:24 AM »

Hi

I'm a bit confused as to the need for a PPA (Provisional patent application)
I know the purpose of it and the basic need for it but the practicality doesn't make any sense.

I'll explain why.
Lets say I file for PPA in USA and receive filling number. Once I receive it I am able to launch my product commercially if
I wanted to and be able to place the words "patent pending" on the product for the next 12 months until I'm able to do a full patent application. Lets put aside the fact that it would destroy the novelty by making it publicly known. I should then be able to sell my product until someone who owns the original invention tries to stop me from selling it due to them having a patent registered in the country that I'm selling my product in. Seeing that no patent search is conducted by examiner on a PPA their might be a possibility that the invention already exist or something very similar which means I would have enjoyed 12 months of selling my product without any legal issues. If the person of the original invention or something similar has registered their invention in a different country as to the one I'm selling in then I am to understand that they will have no legal cause to stop me.

Lets say that if someone else comes up with the same idea or something similar within my 12months timeframe and they have also made their product publicly known and starts selling it, who would have the rights to claim when they file the full patent. I would assume the person that filed their PPA first. This would also mean that both of us would have had almost 12 months of selling our products on the market and the person that is awarded the rights to the full patent can them legally force the other person to remove their product from the market depending on which country it's sold in and where they have filed the full patent. Now from my understanding it there will be a race as to who files for the full patent application first.

I basically want to file my PPA and start selling my product immediately in various countries with the word "patent pending" but I don't want to infringe on any other persons patent rights or have someone else seeing my product and files for a PPA or even a full patent. I am aware that once a product is publicly known then no person can patent it accept the inventor themselves but how does the patent office know if the product is on the market seeing that the inventor only filed a PPA and it's not examined. I assume when the person wants to do a full patent application then the examiner will be conduct a proper search in the market and on the patent database but what about a PPA or if the patent is rejected the applicant can then just register it in a different country where it's not registered or even sold.

I don't understand this. Can anyone shed some light on this.

10

Patent Questions and Advice / Re: Claim confusion

« Last post by Brad on May 28, 2022, 08:55:10 AM »

These are called "functional limitations" that are sometimes added to a claim.   From the USPTO MPEP:

I. INHERENCY AND FUNCTIONAL LIMITATIONS IN APPARATUS CLAIMS
Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). See also MPEP https://www.uspto.gov/web/offices/pac/mpep/s2114.html