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Is it Patentable?
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   Public Disclosure?
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Patrick Guillot
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Public Disclosure?
« on: Jun 1st, 2005, 12:44pm »
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For you attorneys out there, I think I know the answer to this already but I am hoping for some new insight. If a product idea is revealed to a comany (with or without NDA) in the hopes of obtaining a licensing agreement; does this constitute a public disclosure and void the patentability of said product?
 
Thanks in advance for your help.
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JimIvey
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Re: Public Disclosure?
« Reply #1 on: Jun 2nd, 2005, 5:40pm »
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First of all, the NDA matters.  With the NDA, no public disclosure.  If they violate the NDA, I think that bars the patent and your sole remedy is in contract law.  
 
Without the NDA, it depends on a number of factors.  As the idea owner, you have the power to avoid that issue altogether.  Just file your application before making any disclosures without an NDA.  Then, there's no doubt in the viability and enforceability of your patent.  Disclosing without the NDA is just inviting a huge multi-million-dollar fight in courts.  Remember, an ounce of prevention is worth a pound of cure.
 
If you really want to know the answer, maybe some litigators hang out here and can map out the precise inquiry into when exactly a disclosure is "public" under Section 102.  
 
And, of course, the answer varies from country to country.
 
Regards.
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James D. Ivey
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ringo
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Re: Public Disclosure?
« Reply #2 on: Jun 26th, 2005, 4:24pm »
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An NDA is essential, however you can also prove it was in your possession at a certain moment in time by registering with a Digital Notary such as www.file-reg.com. I have been doing this for a couple of years now and have found that because I can legally prove I came up with a concept at a certain moment in time the other party has never attempted to steal my work. You can also register your work while you are developing it, therefor this will strengthen any claim you make.  
 
It does not rule out an NDA, which remains a priority, but at least you have a lot more then just a piece of paper.
 
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Isaac
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Re: Public Disclosure?
« Reply #3 on: Jun 26th, 2005, 5:00pm »
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Without an NDA, a disclosure for the purpose of licensing
discussion would likely not count as a publication, a patent,
or as placing the invention on sale.  So the disclosure itself
should not count as a publication.  However without an NDA,
it might be that the person you disclose the invention to could
make a publication or attempt to sell products thus starting
a 1 year clock.
 
I understand that you can avoid the problem by filing an application
but I don't believe that's always a practical solution.  There are
good reasons why there is a one year grace period in the US.
« Last Edit: Jun 26th, 2005, 5:01pm by Isaac » IP Logged

Isaac
JSonnabend
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Re: Public Disclosure?
« Reply #4 on: Jun 27th, 2005, 7:40am »
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on Jun 26th, 2005, 4:24pm, ringo wrote:
I have been doing this for a couple of years now and have found that because I can legally prove I came up with a concept at a certain moment in time the other party has never attempted to steal my work.

If that's true, it's likely pure dumb luck.  Unless you have patent protection for an idea (or it's held as a trade secret, which is by definition not the case when you disclose to a "digital notary" -- whatever the heck that is), anyone is legally free to "steal" your invention.  With that in mind, I think Ringo's advice may quickly be understood to be bad advice.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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