Recent Posts

1

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.   

2

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.

3

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

4

Patent Questions and Advice / Patent Claim confusion

« Last post by inle on May 26, 2022, 10:10:49 PM »

Hello;

The use claim is sometimes considered legit but sometimes considered as an inferential claim, I would like to know how to distinguish between a use claim and an inferential claim and when it is legit or not legit exactly. Lets take an example:

1. A lock including a rotor for receiving a key.

elements of the claimed invention include:
+ The lock; and
+ The rotor.
The key is NOT an element of the claimed invention. Thus this is an inferential claim (not legit) but how the meaning is interpreted because there is two possibilities :

+ First Possibility:

A lock including a rotor for receiving a key.

The lock include a rotor and the lock is used to receive a key.

+ Second Possibility:

A lock including a rotor for receiving a key.

The lock include a rotor and the rotor is used to receive a key.

Thank You

5

Patent Questions and Advice / Re: Can you patent a use for gorilla glass?

« Last post by acornell on April 24, 2022, 11:57:41 PM »

My idea is a bit wacky: It takes a material currently used in armored vehicles for its strength, and repurposes it for its optical properties in an everyday household appliance. But once you read the specs on the material, it's obviously a good fit--like using gorilla glass in a windshield.

It sounds like it's not patentable!

Thank you very much for the feedback. It was incredibly helpful

6

Patent Questions and Advice / Re: Can you patent a use for gorilla glass?

« Last post by Brad on April 24, 2022, 06:27:55 PM »

Unless you are using the glass for a completely unique and almost wacky application it would be near impossible to get a "new use" patent application approved.   I know there are websites and even some patent attorneys who still say you can get a patent on a "new use for known material" but in my experience they are very hard and expensive to get approved and anyone who tells you it is possible should be willing to show you some recent examples of patents they got approved for a new use of a known material (I would bet they cannot). 

For example, if your use of Gorilla glass was a new type of bone implant for humans that may have a chance but the use of a protective glass for phones being used as a protective glass for automobiles or other applications is a fairly easy obvious rejection for the patent examiner to make. 

7

Patent Questions and Advice / Can you patent a use for gorilla glass?

« Last post by acornell on April 24, 2022, 04:39:20 PM »

Can you patent a use for gorilla glass?

The gorilla glass itself seems to be patented:
https://www.corning.com/worldwide/en/patent-notices.html

Are these the only patents that can be had? Or could someone patent a *use* for their gorilla glass?

Although gorilla glass was developed for smart phones, it is now being adapted for use in automobiles as a lightweight, super-strong windshield:
https://www.youtube.com/watch?v=3UHzAb8ko24

There was about a year of research that went into creating that successful three-layer laminate.

Was their idea of using gorilla glass as a car windshield a *patentable* idea? Or does it fail the "non-obvious" requirement?

Their idea seems to check all of the other boxes: new and novel, original, useful... I imagine the use of gorilla glass will become standard in the automotive industry over time. But was it patentable?

(I have an analogous idea, using a totally different material, that could be also be widely beneficial.)

8

Patent Questions and Advice / Re: Public Disclosure

« Last post by danm on April 20, 2022, 11:08:47 PM »

Thanks for your quick response and suggestion, Brad.  Much appreciated!

9

Patent Questions and Advice / Re: Public Disclosure

« Last post by Brad on April 20, 2022, 08:46:39 PM »

In your case the "on sale bar" may be more relevant.  You only have one year from your first sale or offer for sale to get your patent filed:  https://en.wikipedia.org/wiki/On-sale_bar

If I remember correctly, even secret or non-public sales can still count against you. 

In your case you may need to think of some new improvement or new feature that was not part of the original sale and file a patent that focuses on the new/improved machine with the new feature.   Ideally you can still get that patent approved but the risk/downside is that your original machine (without the new improvement) can still be made and sold my your competition. 

10

Patent Questions and Advice / Public Disclosure

« Last post by danm on April 20, 2022, 03:06:32 PM »

I would like to file a provisional patent application for my invention:  a machine for inspecting external surfaces of cylindrical parts for defects in a production environment.  However, I am not sure when the one-year grace period of public disclosure begins.  My company accepted an order to develop such a machine and delivered it on 2/5/21 to a private customer.  While on the customer site, the machine was tested and refined (changed somewhat).  The machine was then put into production on 6/24/21.  My company had not advertised the machine or disclosed it to the public until we created a website for that purpose on 5/23/21.  Certainly, we made a public disclosure then.  I am not sure if the delivery of the (unproven) machine on 2/5/21 constitutes public disclosure or not, since the delivery was the result of a private transaction between my company and the customer.  My company did not have a non-disclosure agreement with the customer.  My basic question:  "Was public disclosure made on 5/23/21 (website) or 2/5/21 (delivery)?"