The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Oct 28th, 2020, 1:28am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
I have an Invention ... Now What?
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Is it worth to publish ideas before filing?
« Previous topic | Next topic »
Pages: 1 2 3 4  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Is it worth to publish ideas before filing?  (Read 3268 times)
eric stasik
Full Member
***


director, patent08

   
WWW Email

Posts: 391
Re: Is it worth to publish ideas before filing?
« Reply #5 on: May 22nd, 2005, 5:54am »
Quote Quote Modify Modify

mike117,
 
If you quailify as a small entity, filing a provisional application will save you a grand total of 50 US dollars - that is the difference between the basic filing fee for an ordinary utility patent application and the filing fee for a US provisional application. The costs of preparing the application with professional assistance should be more or less the same. (you don't have to file a formal declaration so the difference here will be 50-100 bucks.)
 
A well-written application costs what it costs. There are no shortcuts. If you do not file a well-written application then you are wasting your time and money and fooling yourself into believing that you are "protected."
 
The only protection the provisional application will provide you with is protection from your public disclosure from being a statutory bar.  
 
Unless you provide adequate support for the claims in your provisional application, you will receive nothing in the way of patent protection.  
 
The US provisional application was created by the US congress to bring the US into compliance with the obligations under the TRIPs agreement. the problem was the wording of 35 USC § 102(e).
 
Prior to the amendment of US patent statute in 2000, 35 USC 102(e) read as follows:  
 
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant of the patent, or on an international application by another who has fulfilled the requirements of (1), (2), and (4) of section 371 (c) of this title before the invention thereof by applicant for patent.  
 
(This has been subsequently amended, but the essential problem still remains.)
 
The problem is the words "filed in the United States."
 
What this means was that a patent application first filed outside the US was NOT considered as prior art to another US application for patent until it was filed in the US. US applications are considered as prior art to other US applications as of their filing date.  
 
This creates an biased situation favoring US inventors and placing foreign inventors at a disadvantage. The US provisional was created as a low cost way for foreign inventors to obtain 35 USC 102(e) priority. In practice, a foreign inventor who files an ordinary application with the EPO can simultaneously file the same application with the USPTO as a provisional application and obtain a 102(e) priority date that is the same as the filing date.  
 
In short, the US provisional is not and was never intended to be a "poor man's patent." That something like 20% of the applications filed with the USPTO last year were filed a provisional applications suggests to me that the USPTO has done a miserable job in informing their customers about what a provisional application is all about.
 
Your comments suggest that you too believe that you can file a brief description of your invention, without professional assistance, and eventually obtain useful patent protection. Nothing could be further from the truth.  
 
You would be smart to spend a few hundred dollars with a US patent professional to discuss the wisdom of filing your application provisionally. Maybe your description is good enough, maybe your drawings are good enough - but if you did them yourself they probably are not.  
 
If you think your invention is valuable enough to patent, then you should find out where you stand before making any other investments.
 
And if you do decide to go ahead and file a provisional application on your own don't say you weren't warned.  
 
best regards,
 
eric stasik  
IP Logged

eric stasik
director

http://www.patent08.com

patent08
patent engineering,
business development,
and licensing services
postbox 24203
104 51 stockholm
sweden
Wiscagent
Full Member
***




   


Posts: 843
Re: Is it worth to publish ideas before filing?
« Reply #6 on: May 22nd, 2005, 8:30am »
Quote Quote Modify Modify

Another problem with publishing an invention before filing a patent application (regular or provisional) is it gives your competition an opportunity to publish (or file patent applications for) variations on your invention.
 
Suppose your publication discuses how to make a gadget from A using method B.  Inspired by your publication, another person skilled in the art reads your publication and recognizes that the gadget can also be made from A* using method B*.  That skilled person quickly applies for a patent disclosing this modification to your invention.
 
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, it’s too late – prior art has already been established.
 
Had you quietly just applied for an application, that other skilled person would not have been inspired to build on your invention.  You could have secured patent rights to both A/B and A*/B*.
IP Logged

Richard Tanzer
Patent Agent
Isaac
Senior Member
****




   


Posts: 3472
Re: Is it worth to publish ideas before filing?
« Reply #7 on: May 22nd, 2005, 12:02pm »
Quote Quote Modify Modify

I don't understand how the provision of 102(e) were only US
applications and patents are treated as prior art as of their
filing dates has an adverse effect on foreign filers.  Both
Foreign and domestic filers would face exactly the same prior
art when filing in the US.  The effect of not treating foreign
patents based on their filing dates is that more patents issue
in the US than would otherwise, regardless of who files for
those patents.
IP Logged

Isaac
mike117
Newbie
*




   


Posts: 7
Re: Is it worth to publish ideas before filing?
« Reply #8 on: May 22nd, 2005, 12:41pm »
Quote Quote Modify Modify

eric stasik,
No, no, no... Writing "as full and high-quality as possible" as to provisional filing I meant namely best claim writing, the full disclosure, an assistance of lawyers if needed, etc... and we consider not $50 difference between provisional and non-provisional but thousands dollars for final drawing up patents that is sensible for a little firm. But I've read your considerations very attentively and still thinking on some of them... Thanks a lot!
mike117  
 
 
Wiscagent,
So, filing the provisional we don't know what our competitors have undertaken having read our publication, it's unpleasant of course, i.e. we have to consider our initial point (publication) as final and provide full disclosure in this publication. It's not so good for inventions "in work". Thanks!
mike117
IP Logged
eric stasik
Full Member
***


director, patent08

   
WWW Email

Posts: 391
Re: Is it worth to publish ideas before filing?
« Reply #9 on: May 23rd, 2005, 12:33am »
Quote Quote Modify Modify

on May 22nd, 2005, 12:02pm, Isaac Clark wrote:
I don't understand how the provision of 102(e) were only US
applications and patents are treated as prior art as of their
filing dates has an adverse effect on foreign filers.  Both
Foreign and domestic filers would face exactly the same prior
art when filing in the US.  The effect of not treating foreign
patents based on their filing dates is that more patents issue
in the US than would otherwise, regardless of who files for
those patents.

 
Mr. Clark,
 
The issue is not what prior art could be used against a US application, but when the US application becomes prior art to other US applications. It is fallout from the "first to file" versus "first to invent."  
 
In the EPO all that matters is the filing date anywhere in the world.  In the USPTO what matters is the filing date IN THE US.  
 
It is my understanding that under 102(e) unpublished non-US applications become prior art to other US applications as of their filing date IN THE US, not as of their filing date which may have been one year earlier.  
 
For a US inventor who first files her application in the US, the filing date as a priority document and as 102(e) prior art to other US applications is the same.  
 
If I am mistaken, I would appreciate any clarification/correction.
 
mike117, I am hard pressed to see how you will save thousands of dollars. If you have a complete application ready to file and the only difference is that you want to file it as a provisional application instead of as a regular application the only difference is the difference in application fee (and declarations) which combined is a few hundred dollars.  
 
Cheers,  
 
Eric
IP Logged

eric stasik
director

http://www.patent08.com

patent08
patent engineering,
business development,
and licensing services
postbox 24203
104 51 stockholm
sweden
Pages: 1 2 3 4  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board