The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Oct 31st, 2020, 11:36am

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)
   provisional patent application number
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: provisional patent application number  (Read 646 times)
Sue
Guest
provisional patent application number
« on: Dec 12th, 2005, 4:17pm »
Quote Quote Modify Modify Remove Remove

I have recently filed for two provisional patents.  I was told by someone not to give out my application numbers to anyone, but I wasnt told why.  I am meeting with a representative of a corporation interested in the patents, and he has asked fo rthe application numbers...  Can someone shed some light on this?  Is there any negative consequence to giving out a patent application number to a prospective licensor?  Thanks.
IP Logged
Wiscagent
Full Member
***




   


Posts: 843
Re: provisional patent application number
« Reply #1 on: Dec 12th, 2005, 4:54pm »
Quote Quote Modify Modify

Sue –
 
You presumably filed two provisional applications for patents.  I’m not playing semantic games, but it is important that you understand that by themselves the provisional applications will neither publish nor provide you with any patent rights.  All the provisional applications do is provide a priority date for subsequent regular patent applications.
 
Without knowing the details of your situation, I don’t know why you were advised not to divulge your application numbers.
 
For a regular patent application, under some circumstances it can be to your disadvantage to divulge the application numbers.  Knowing the application numbers might allow another party to file a “protest” against your applications.  
 
“Any information which in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest... While prior art documents, such as patents and publications, are most often the types of information relied on in protests [they are] not limited to prior art documents.  Protests may be based on any facts or information averse to patentability.”  - see MPEP, chapter 1900
 
Without the application numbers it would be difficult to file a protest; but the protest procedure does not apply to provisional applications.  Also, a protest is not necessarily a bad thing for the applicant.  If your regular application survives a protest, it might make any patent resulting from the application more difficult to invalidate.
 
 
Richard Tanzer
IP Logged

Richard Tanzer
Patent Agent
Sue
Guest
Re: provisional patent application number
« Reply #2 on: Dec 12th, 2005, 5:05pm »
Quote Quote Modify Modify Remove Remove

Thank you for the reply.  I am aware of what a provisional patent application is in relation to a regular utility patent application.  
I was told not to give out the app numbers (yes, its two separate provisonal applications) by someone at the inventors helpline at the USPTO.  I didnt ask for this advice, I was asking some unrelated questions about filling out paperwork and fees and the advice came unsolicited.  I didnt ask why or give it another thought until the corporate rep brought it up by asking me for the numbers today...
IP Logged
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: provisional patent application number
« Reply #3 on: Dec 12th, 2005, 6:18pm »
Quote Quote Modify Modify

That raises an interesting question:  what can you safely divulge?
 
I don't know why they want to know the serial numbers.  If I were in their position (assuming legit motivation), I'd want to see the provisional applications themselves (at least the body of them) and would want to know the filing date.  With that, I can assess the idea itself and the likelihood that the provisional application is actually meaningful, i.e., might actually provide a reliable priority date.  In addition, the priority date tells me what prior art can be considered and when we would have to fund a real application.
 
I wouldn't need the serial numbers for that.  It might be useful having them just for identification purposes -- e.g., the '123 application and the '456 application.  But you can also use or just make up docket numbers for that.
 
Switching back to the applicant side of the issue, I'd want a proper NDA prior to giving them that information.  I'm not even sure that's enough protection, but it's a start.
 
You might simply ask the rep of the corp. why he wants the serial numbers.  
 
For what it's worth, it might be good to have someone try to sabotage your application in the Patent Office.  It's much easier to amend over prior art before your patent issues.  And, with all that prior art and other stuff considered in the Patent Office, the validity of your patent is much more difficult to challenge in court.
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Pages: 1  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