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Topic: 102 bar based on submission to Invention Co.? (Read 3763 times) |
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MattB
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Posts: 127
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102 bar based on submission to Invention Co.?
« on: Oct 9th, 2007, 2:25pm » |
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Hello,
I have a client that wishes to file for a patent. However, he submitted his idea more than one year ago to an invention company that advertised on the television: Advent Product Development.
Does his submission to Advent constitute a 102 (b) bar for public use, publication, or on sale?
If you know of any cases where this has been an issue, please forward.
Thanks,
MattB
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Matthew L. Bycer
Registered Patent Attorney
http://www.bycer.com
http://www.cvglaw.com
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Isaac
Senior Member
Posts: 3472
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Re: 102 bar based on submission to Invention Co.?
« Reply #1 on: Oct 9th, 2007, 2:41pm » |
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If the submission was a disclosure with a proper non disclosure agreement (NDA) then the disclosure should not be a barring event.
However, an NDA would be ineffective to prevent an offer to sale from starting the 102(b) clock. You'll need explore some details of the submital arrangement to clear up the "on sale" possibility.
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Isaac
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MattB
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Posts: 127
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Re: 102 bar based on submission to Invention Co.?
« Reply #2 on: Oct 9th, 2007, 4:04pm » |
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Thanks, Isaac!
Sadly, the client claims not to have any NDAs signed. Perhaps the company sent a form promising to keep it confidential, where his submission was the acceptance.
Even so, the submission to the company might be an offer for sale. I think it's ok given that he only tried to sell the IP and not the invented product.
Such a shame, those TV ad invention co's. I had to hear the whole sob story...
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| « Last Edit: Oct 9th, 2007, 4:06pm by MattB » |
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Matthew L. Bycer
Registered Patent Attorney
http://www.bycer.com
http://www.cvglaw.com
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Landers
Newbie
Posts: 10
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Re: 102 bar based on submission to Invention Co.?
« Reply #3 on: Nov 21st, 2007, 12:09am » |
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Don't take my word for what I'm about to say because I'm not positive.
Even if he doesn't have a NDA, it is possible that his disclosure is not a "printed publication" for 102b purposes. There may have been an implied nondisclosure agreement.
If his disclosure was an attempt to obtain legal services, there is a duty of confidentiality and I believe that also will not trigger 102b.
As for the on-sale bar - that applies to efforts to sell the invented articles or process, not the intellectual property. If the patent covers widgets, offering the widgets for sale would be a bar, but offering the intellectual property would not.
Furthermore, in order for an offer to sell to trigger the "on sale" bar, it must be a commercial sale. In other words it must contain enough information to amount to an offer to sell as defined under the UCC - including price and other terms. Simply saying "I'm looking for people who might want to buy some widgets, are you interested?" is not a commercial offer for sale.
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Paragen
Pharmaceuticals - small molecule drug discovery - business methods
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Bill Richards
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Posts: 758
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Re: 102 bar based on submission to Invention Co.?
« Reply #4 on: Dec 6th, 2007, 4:22am » |
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on Oct 9th, 2007, 2:25pm, MattB wrote:| However, he submitted his idea more than one year ago to an invention company that advertised on the television: Advent Product Development. |
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I think what Matt is saying here is that the company advertised on television, not that they advertised the product on television. If so, it's not an offer for sale.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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