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I have an Invention ... Now What?
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   Is it worth to publish ideas before filing?
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   Author  Topic: Is it worth to publish ideas before filing?  (Read 3270 times)
Isaac
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Re: Is it worth to publish ideas before filing?
« Reply #10 on: May 23rd, 2005, 4:15am »
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Mr. Stasik,
 
I don't think you are mistaken. I think we disagree whether the
result can be considered discriminatory. Your clarification
helps me understand your position, but I don't agree with it.
« Last Edit: May 23rd, 2005, 4:16am by Isaac » IP Logged

Isaac
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Re: Is it worth to publish ideas before filing?
« Reply #11 on: May 23rd, 2005, 6:48am »
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on May 22nd, 2005, 8:30am, Wiscagent wrote:
During the next 364 days you continue to develop your invention.  You also figure out that A*/B* is a valuable improvement.  You then apply for a patent disclosing and claiming A/B and A*/B*.  Regarding the A*/B* combination, its too late prior art has already been established.

I don't agree with this caution.  Whether or not the scenario plays-out as described depends largely on the nature of the improvement.  In many instances, the original applicant's ability to swear-behind the second party's date of publication --  which can't be before the first article's date of publication under your scenario -- practically speaking may greatly reduce the risk you've outlined.
 
- Jeff
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Wiscagent
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Re: Is it worth to publish ideas before filing?
« Reply #12 on: May 23rd, 2005, 8:52am »
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I cautioned that publishing an invention prior to applying for a patent may alert your competition to your activities.  Your competition could improve on your invention and publish or apply for a patent on their improvement.
 
Jeff noted that Whether or not the scenario plays-out as described depends largely on the nature of the improvement.  I agree completely.  There are many situations where my concern is irrelevant or trivial.
 
Jeff continued In many instances, the original applicant's ability to swear-behind the second party's date of publication --  which can't be before the first article's date of publication under your scenario -- practically speaking may greatly reduce the risk you've outlined.  I was not clear in describing my hypothetical scenario.    
 
Im thinking of a situation where an invention is made on Jan 1, 2005 at the XYZ Company.  This invention was a narrow, specific solution for a problem.  In the context of XYZs development program the invention is a valuable step.  But the work done on Jan 1 only supports narrow patent claims.  When the invention is made there is much enthusiasm at XYZ; there is a temptation to think of this solution as being THE solution.  On Jan 15, 2005 XYZ publishes the invention.
 
The invention allows XYZs program to move forward.  Further experimentation takes place, other individuals participate in the program, and cost-cutting efforts are initiated.  All these efforts generate related inventions during the next year or two.  XYZ wants to shelter these improvements (or alternatives) in addition to the original invention.
 
However, when XYZ published the results on Jan 15, 2005, it alerted QRS Company.  QRS works quickly, and publishes and/or applies for patents on improvements (or alternatives) on July 15, 2005; before XYZ develops similar improvements (or alternatives).
 
Given the above scenario, XYZ may obtain patent protection only for the invention made on Jan 1, 2005; and QRS may obtain patent protection for their non-obvious improvements and alternatives.  Had XYZ maintained secrecy until their patent application publishes (June 06 or June 07) they could have developed a stronger patent portfolio to use against QRS.
 
Anyway Jeff, thats what I was thinking.
 
 
 
Rich Tanzer
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mike117
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Re: Is it worth to publish ideas before filing?
« Reply #13 on: May 23rd, 2005, 12:08pm »
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eric stasik
...not to save money but to shift the final payments... maybe it is of interest only for a little firm having several inventions and planning current dealings, publishing implies the payments two years later, filing the provisional implies the payments one year later, filing non-provisional implies the payments very soon, but some ideas are in the air and this opportunity with filing provisional or publishing is of interest for these purposes and in this case...
As to the discrimination. Let's imagine an inventor in US and an inventor outside US, both going to file IN USPTO, it's obvious that both are in equal positions in the case. It's quite another matter that filing outside is not considered by USPTO as a strong thing. By the way, it's of interest that the publication outside is considered by USPTO in this way. And still one question concerning the theme (US and non-US): what is the difference between "patented" of 102(a) and "was described in.... a patent granted..." of 102(e)? Was described but was not claimed? I'm sorry in advance if my points will seem to be too superficial. Thanks!
mike117
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eric stasik
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Re: Is it worth to publish ideas before filing?
« Reply #14 on: May 23rd, 2005, 12:59pm »
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on May 23rd, 2005, 12:08pm, mike117 wrote:
And still one question concerning the theme (US and non-US): what is the difference between "patented" of 102(a) and "was described in.... a patent granted..." of 102(e)? Was described but was not claimed? I'm sorry in advance if my points will seem to be too superficial. Thanks!
mike117

 
mike117, there are no too superficial questions. 102(a) refers to a public disclosure such as a granted patent or publication, 102(e) refers to a patent application not yet published. an unpublished (and still secret) US application for patent can be prior art to another co-pending application for patent.  
 
good luck with your strategy!  
 
mr. clark, i suppose the word "discriminatory" may be too strong. the salient point was that the provisional application was created to address the 102(e) situation and was never intended to be a poor-man's patent.  
 
my own experience - and that obtained via this forum - suggests to me that more than a few US inventors mistakenly believe the provisional patent is a good and useful thing, which for US inventors - despite mike117's objectives - is almost never true.  
 
this was a good discussion. thanks.  
 
/eric
 
 
 
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