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   102 bar based on submission to Invention Co.?
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   Author  Topic: 102 bar based on submission to Invention Co.?  (Read 2388 times)
Wiscagent
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Re: 102 bar based on submission to Invention Co.?
« Reply #5 on: Dec 6th, 2007, 10:14am »
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"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."
 
Few, if any, of the invention companies are law firms or patent agencies.  They advertize their ability to market inventions as well as their ability to help inventors obtain patents.  It is unlikely that disclosure to one of these firms would constitute an unfettered attempt to obtain legal services.
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Richard Tanzer
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Bill Guess
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Re: 102 bar based on submission to Invention Co.?
« Reply #6 on: Dec 6th, 2007, 2:59pm »
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See:
 
IN RE JOHN KOLLAR   an appeal from the PTO BPAI   to the  CAFC      "pro se"      Grin
 
http://www.ll.georgetown.edu/federal/judicial/fed/opinions/01opinions/01 -1640.html
 
"Finally, the PTO argues that the Celanese Agreement constitutes a sale of the process disclosed in claim 1 because Kollar received royalty payments and licensing rights in certain Celanese technology as consideration for disclosing his process and granting Celanese the “right to commercialize” the invention."
 
"Although the Celanese Agreement specifically contemplates that “resultant products” manufactured using the claimed process could potentially be sold,"
 
 
a kinda-sorta similar case involving a licensing agreement over one year prior to filing.  The CAFC said that selling a license was not the same as selling or offering to sell the invention.  Seems similar to this situation.
 
Bill
« Last Edit: Dec 6th, 2007, 3:13pm by Bill Guess » IP Logged
Bill Richards
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Re: 102 bar based on submission to Invention Co.?
« Reply #7 on: Dec 6th, 2007, 5:08pm »
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on Dec 6th, 2007, 2:59pm, Bill Guess wrote:
See:
 
IN RE JOHN KOLLAR   an appeal from the PTO BPAI   to the  CAFC      "pro se"      Grin
 
http://www.ll.georgetown.edu/federal/judicial/fed/opinions/01opinions/01 -1640.html
 
"Finally, the PTO argues that the Celanese Agreement constitutes a sale of the process disclosed in claim 1 because Kollar received royalty payments and licensing rights in certain Celanese technology as consideration for disclosing his process and granting Celanese the “right to commercialize” the invention."
 
"Although the Celanese Agreement specifically contemplates that “resultant products” manufactured using the claimed process could potentially be sold,"
 
 
a kinda-sorta similar case involving a licensing agreement over one year prior to filing.  The CAFC said that selling a license was not the same as selling or offering to sell the invention.  Seems similar to this situation.
 
Bill

There are two issues here.  First, was the dislosure to the invention promotion a disqualifying disclosure?  And, second, was there an offer for sale?
Kollar does not address the first issue, but it does the second.  Unless the TV ad was for the actual product, there's no issue.  If it was, then it's an offer for sale of the resultant product.
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William B. Richards, P.E.
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