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   One year rule and Patentability
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   Author  Topic: One year rule and Patentability  (Read 2677 times)
john2006
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One year rule and Patentability
« on: Sep 18th, 2006, 11:45pm »
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Hi everyone,
 
I would like to ask some questions regarding the "one year rule" as it applies to the patentability of mechanical devices via Utility Patents. Does electronic information count as a "printed publication" ? For example, if an inventor discloses an invention on a website or newsgroup, does this start the one year clock ? I am gusssing that it does, but I wanted to ask to be 100% sure.  
 
Also, is it possilbe to publicly disclose an invention, wait almost one year, then file a provisional patent application, then file a regular patent application almost one year after the filing date of the provisional ? This would actually give an inventor two years after a public disclosure of his / her invention in order to file a regular utility patent application.  
 
I understand that any public disclosure prevents obtaining a foreign patent, & that the one year rule does not apply to foreign patents.  I am only concerned with a U.S. patent.
 
Thanks for your help.
 
Sincerely,
John
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Sudhir Aswal
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  sudhiraswal  
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Re: One year rule and Patentability
« Reply #1 on: Sep 19th, 2006, 12:09am »
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Dear John,  
 
Yes, publication in any form including electronic publication of the information counts as a "printed publication". But the public disclosure must be  for the reasonalbe working/trial of the invention as well as must be necessary having regard to the nature of the invention.
 
Yes, you have the time to file a Provisional specification within one year of the public disclosure and the complete specification in relation to the same may be filed within a further period of one year.    
 
But it is necessary that if any person files a patent application in contrvention of your rights you should immediately file an application for protecting your interests.
 
No, as far as Indian Patnet Law is concerned we can also rely upon the public disclosure and our bonafides in making the application thereafter if any objection comes at the stage of examination of the same.  
 
Regards,
 
Sudhir Kumar Aswal  
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Sudhir Kumar Aswal
Patent Attorney, India
Aswal Associates
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Bill Richards
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Re: One year rule and Patentability
« Reply #2 on: Sep 19th, 2006, 7:41am »
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Sudhir says:  After filing a PPA, "the complete specification in relation to the same may be filed within a further period of one year".
Just to clarify, the specification submitted with the PPA must be complete to the extent it discloses and teaches the invention and fully supports the ultimate claims.  It would be wrong to think one can "flesh out" the spec when filing the NPA.  I'm sure that's what Sudhir meant, but I wanted to make sure there was no misunderstanding.  If you will review some of the posts to this Forum regarding PPAs, they are fraught with danger and must be used very carefully.  Some practitioners strongly discourage them.
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William B. Richards, P.E.
The Richards Law Firm
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Re: One year rule and Patentability
« Reply #3 on: Sep 19th, 2006, 10:17am »
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Bill Richards wrote "… the specification submitted with the PPA must be complete to the extent it discloses and teaches the invention and fully supports the ultimate claims.  It would be wrong to think one can "flesh out" the spec when filing the NPA.”
 
I don’t completely agree Bill, and here’s why.  It is fairly common for an invention to initially be developed as a single embodiment.  If that first embodiment is fully described, enabled, and the best (in this case ONLY) mode presented that is sufficient for a provisional application for patent.  And that application is sufficient to support at least one (albeit) narrow claim for the single embodiment.
 
Over the ensuing months the invention is further refined and broadened.  Alternate materials / method / uses are developed.  Less than one year after filing the provisional application, a robust, “fleshed-out,” non-provisional patent application is filed.
 
I don’t see any disadvantage to having filed the provisional application as described above.  Clearly only narrow claims supported by the provisional application can benefit from the earlier priority date, but isn’t that better than having no claims with an early priority date?
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Richard Tanzer
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john2006
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Re: One year rule and Patentability
« Reply #4 on: Sep 19th, 2006, 11:34am »
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Hi everyone,
 
Thanks for your replies.
 
I would like to add a few more questions to this thread to clarify, if I may.
 
1. If no non-disclosure agreement is signed, can normal development activity such as sending emails of drawings and descriptions to machinist's for prototype RFQ's be considered a public disclosure and start the one year clock ?  
 
2. If you are working with a machinist and the design is developed further during the prototype phase, would the date of the email communications related to the improvements, start the one year clock ?
 
3. What about sharing the details of a design with someone that can help it's development? Just as a very simple example, lets say you have a design that uses a lever, and you email the details of your design to a company that makes levers, to ask them questions regarding lever technology in relation to your invention. Does this start the one year clock ?  
 
4. What about web sites that allow you to upload drawing files and descriptions so that machinists can quote the manufacture of the product ? If no non-disclosure agreement is implemented, it seems this must be considered a public disclosure as well ?  
 
Thanks again for your help.
 
Sincerely,
John
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