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I have an Invention ... Now What?
(Moderators: Forum Admin, JimIvey, JSonnabend)
   I have a patent pending can i shop the idea safely
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   Author  Topic: I have a patent pending can i shop the idea safely  (Read 1931 times)
JSonnabend
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Re: I have a patent pending can i shop the idea sa
« Reply #5 on: Oct 20th, 2004, 7:56am »
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I agree with Isaac and think that W may have overstated your position a bit.  As Isaac pointed out, you are protected in the sense that the disclosure of your idea to others will not jeopardize your patent grant.  
 
Isaac is also correct that you have no protectable rights at this point.  Anyone to whom you shop your idea is free, essentially, to steal it.  Only when your patent eventually issues, assuming it does so, will you be able to stop them, and then only if your claims actually cover what they are doing.  Also, you will not be able to recover for sales which occurred prior to issuance.
 
Depending on the nature of the product, sometimes pre-issuance "infringement" should be avoided, and sometimes it is actually welcomed.  I suggest you speak with an IP attorney in confidence in more detail.
 
- Jeff
« Last Edit: Oct 20th, 2004, 7:56am by JSonnabend » IP Logged

SonnabendLaw
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JSonnabend
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Re: I have a patent pending can i shop the idea sa
« Reply #6 on: Oct 20th, 2004, 8:00am »
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on Oct 19th, 2004, 3:15pm, Allan wrote:
Does this advice also apply to a provisional patent??

Allan, there is no such thing as a "provisional patent", only a provisional application.  Because only issued patents, and not applications, give enforceable rights, and because a provisional application never directly matures into a patent,  the preceding discussion is largely inapplicable to provisionals.  The discussion only applies to provisional applications when a formal application claiming priority to the provisional is filed, and then often only in a limited sense.
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SonnabendLaw
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bill
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Re: I have a patent pending can i shop the idea sa
« Reply #7 on: Oct 20th, 2004, 9:53am »
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Thanks guys. The opinions and information you have provided is immeasurable. Any further comments and or suggestions would be warmly welcomed.
 
 
Cheers,
Bill
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JimIvey
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Re: I have a patent pending can i shop the idea sa
« Reply #8 on: Oct 21st, 2004, 10:41am »
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It seems the issue has been reasonably well covered, but I'll go ahead and toss in my perhaps superfluous thoughts on the matter.
 
At this stage, you have 2 types of intellectual property protecting your idea: a patent which doesn't exist yet, and a trade secret.  
 
Everyone here is correct; no patent rights without an issued patent.  How effective your application will be depends on (i) when it was filed and (ii) the substantive sufficiency of your application in protecting your idea.  The former is set.  The latter is impossible to tell from here.  With respect to provisional applications, the latter consideration is where they tend to fall short.  Many people who draft provisional applications seem to do so with the belief that the regular laws with respect to sufficiency of disclosure don't apply -- and that's a mistaken belief.
 
The important thing to note is that you may still have trade secret protection and that talking to potential licensees/purchasers will most likely cost you that trade secret protection (without NDAs at least).  It may be wise to go that route, but you should understand what you're giving up and why.
 
The fact of the matter is that there's frequently a gap of protection between giving up your trade secret after filing your application and the issuance of your patent.  You're at risk then.  You have to weigh that against the risk your potential licensees would be exposed to in infringing your future patent.  Part of the equation is the life-span of the product/service you invented.  Products with short life spans could be entirely capitalized and exhausted before your patent ever issues -- think Millenium Bug novelty gifts and, if you were a conscious consumer in the 1970s, the pet rock.  Some products have longer life spans but can be profitably capitalized in the few years your application is pending -- think about products that are easy to manufacture and can be flooded into markets very quickly, like articles of injected molded plastic.  If your product is the type of thing that requires a huge investment that won't likely be recouped before your patent issues, you position is stronger.
 
If your invention represents a significant competitive advantage among your potential licensees and their competitors, you might be able to coopt the licensee in the effort to protect your idea.  In other words, you can align your licensee's interests with your own vis-a-vis intellectual property.  That would require some exclusivity of the proposed license and possibly an assignment.
 
I hope that helps.
 
Regards.
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bill
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Re: I have a patent pending can i shop the idea sa
« Reply #9 on: Oct 21st, 2004, 2:35pm »
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Yes, your further comments are clear to me.and yes it is a long term tool. I called around trying to get it co-manufacturered to market it myself via the web and many of the numerous web based tool distributors. My strength is in marketing and the companies is in manufacturing and distribution it seems as if there may be a compromise to work together for an exclusive period of time to launch and then feel it out from there.
 
My thought then would be to show the physical piece face to face of which they have agreed to a meeting in December. If they like what they see physically, then in hand will be an NDA to further show internal parts and drawings etc.
 
Do you agree?
 
Thanks again for the time.
 
Bill
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