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   Confidentiality agreements and patents
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   Author  Topic: Confidentiality agreements and patents  (Read 2393 times)
still_studying
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Re: Confidentiality agreements and patents
« Reply #10 on: Jul 28th, 2007, 12:09pm »
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on Jul 24th, 2007, 4:51pm, Isaac wrote:

 
 
Just to be clear "provisional rights" are not available based on the filing of a provisional application for patent. I don't know if "patent pending" is meant to refer to the filing of a provisional.

Sorry, yeah, that term *is* confusing (not my fault, blame the USPTO!).  The "provisional rights" don't (and can't) refer to a provisional patent application (PPA), since PPAs don't get published, and USC154 is only enforceable when the application is published (and hence must be a nonprovisional application).  It's the rights that are provisional, not the patent application (which must be a nonprovisional).
 
However, after filing a PPA, you can mark a product "patent pending".  Different issue, different section of the USC.
 
Corrections welcomed.
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S.Ratcliffe
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Re: Confidentiality agreements and patents
« Reply #11 on: Aug 6th, 2007, 3:30pm »
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Notwithstanding previous messages; I believe that to look up the saga of  cyclonic (bagless) vacuum cleaners might prove worthwhile.
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JSonnabend
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Re: Confidentiality agreements and patents
« Reply #12 on: Aug 7th, 2007, 8:33am »
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on Aug 6th, 2007, 3:30pm, S.Ratcliffe wrote:
Notwithstanding previous messages; I believe that to look up the saga of  cyclonic (bagless) vacuum cleaners might prove worthwhile.

Wow, that's pretty cryptic.  Care to provide a cite for those interested?
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
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JSonnabend@SonnabendLaw.com
patag2001
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Re: Confidentiality agreements and patents
« Reply #13 on: Sep 7th, 2007, 3:27pm »
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Ive heard submarine patents can catch others off guard that are unknowingly using the invention and can require large royalties.  
 
If a request for non-publication is made, the publication and issue dates are the same.  In such a case, this would appear to limit the collection of royalties to after a patent is granted.  Since collecting royalties can start (i.e., 35 USC 154(d)) on publication for a published patent that has issued, does this prevent the collection of large royalties on submarine patents, meaning a patent having an issue date many years after the filing date?
 
Many Thanks!
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JimIvey
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  jamesdivey  
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Re: Confidentiality agreements and patents
« Reply #14 on: Sep 7th, 2007, 10:14pm »
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Well, collecting royalties can start whenever.  Reasonable royalties awarded in an infringement action can date back to publication but no further.  Deciding to forgo publication is also deciding to forgo provisional rights (reasonable royalty between publication and issuance).
 
Submarine patents are extinct.  The term used to refer to patents that would surface decades after filing.  A colleague of mine once dealt with a Lemelson patent issued in 1991 on an application filed in 1954, I think -- one year after enactment of the modern patent statute.  That's nearly 40 years below the surface.
 
How could that be?  you might ask.  That was before the 20-year term from the date of filing.  The term used to be 17 years from the date of issue, regardless of the filing/priority date.  The 20-year term from filing did away with true "submarine patents".  
 
Jeez, I'm starting to feel old.  I used to walk 20 miles in the snow to school every day in bare feet and wearing a trash bag with arm-holes as a coat on days I was lucky enough to find one.  We didn't have PlayStations, not even PS I (well, before they were numbered).  We had a rock and a piece of string, and we liked it.  When we wanted to watch something different, we had to get up and walk to the TV and twist a knob on it to get a different channel, and there were only 5 of them.
 
Settling back into my rocker....
 
Regards.
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James D. Ivey
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