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Is it Patentable?
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   Advice needed
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Osborne
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Advice needed
« on: Jun 8th, 2005, 10:56am »
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I have been working on an invention of mine since 1987. To cut a long story short as time is of the essence I have now realised that I can do it in software. However I let this slip and now third parties whom I cannot trust have this information. I need to secure the worldwide rights to my idea in the next day or so. What is the best thing I could do. I could never get a detailed patent together in three days is there something i can give to the patent office that will suffice in the short term to protect myself?
Thanks in advance
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JimIvey
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Re: Advice needed
« Reply #1 on: Jun 8th, 2005, 12:54pm »
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Some will tell you to "just file a provisional".  The problem with that approach is that there is no relaxed standard for sufficiency of disclosure for a provisional application, although many seem to assume there is (or at least act like there is).
 
The bottom line is this:  a sufficient disclosure to support your claims (whatever they may ultimately be) is required.  If the disclosure is sufficient within a particular application, there's no reason not to file non-provisionally.  If the disclosure is insufficient, having it on file as a provisional is inadequate.
 
One thing that might help with a quickly thown together emergency prayer of an application as a provisional application is that, with the way things are now, it's unlikely that the Patent Office will evaluate the sufficiency of the provisional application.  It will only mean your patent, while presumed valid, could be unusually susceptible to challenge ... assuming you need your provisional filing date.
 
Remember, there are no shortcuts, you get what you pay (and plan) for, and there are no "poor man's" patents.
 
Lastly, and perhaps a show-stopper for the scenario you've described, laches (pronounced "latches") may bar you from getting any patent protection.  Laches is the legal rule of "use it or lose it" applied to legal rights.  Your invention has been bouncing around in your head (or somewhere) for 18 years.  Assuming it was "ready for patenting" around 1987-88, you would be way outside the 6-year laches limit.  
 
I believe the caselaw currently says 6 years of suppressing an invention prior to seeking a patent is too long.  Maybe someone else here has researched that issue more recently than I have and can give a more up-to-date guideline on how long is too long.
 
For what it's worth, patent law really hates people trying to stretch the monopoly beyond the prescribed patent term.  Sitting on a trade secret for more than 6 years then filing a patent application looks a lot like trying to stretch the term from 20 years to more than 26 years.  That's not allowed.
 
In short, the situation you describe has some serious problems.  I'd recommend talking to a patent practitioner under attorney-client privilege to help sort out your options.
 
One last point:  "worldwide" rights are expensive.  Unless you can budget about $200,000 in the next year to 2.5 years for a single patent application, you're going to have to make some choices about where in the world you can forego protection.  Try to keep your expectations reasonable.
 
Regards.
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James D. Ivey
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Osborne
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Re: Advice needed
« Reply #2 on: Jun 8th, 2005, 2:39pm »
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Thanks very much for the reply, I much appreciate it.  
 
Just to elaborate a tad and hopefully tie up some loose ends the initial hardware prototype I developed in '87 was done purely as a project in an electronics lab( albeit a complcated one) I had no interest in patent at that time I had no commercial interest at that time whatsoever it was purely an academic exercise. I intended to develop it in a particular unique way and then patent it. A year later I found out that a Californian company filed their original patent for exactly the same product in the August of 1987! I finished mine in June '87. They have the worldwide rights and are still in production today. I did not bother developing the idea further because of this, I needed part one to make part 2 viable commercially, also I realised Part 2 could not be done in hardware. However, I have not been too idle the last few years and now realise I can achieve the goal of my idea in software alone. The software version will not infringe any patent rights of Part 1 of the hardware device and the Part 2 of my idea has not yet been done, to my knowledge.  
Hope this makes sense, it is difficult to talk about this without giving too much away.
Thanks again
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gregm170
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Re: Advice needed
« Reply #3 on: Sep 19th, 2005, 1:35am »
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I think the "I have been working on an invention of mine since 1987" part is misleading.  The hardware part seems to be 1987, but the software part seems to be much more recent.  Would laches only apply to the software part then?  It seems like it should if this is what he's claiming.  
 
Greg L. Martinez
SolidStateIP www.solidstateip.com
 
 
 
 
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Greg L. Martinez
SolidStateIP
www.solidstateip.com
www.solidstatepatents.com
gregm170
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Re: Advice needed
« Reply #4 on: Sep 19th, 2005, 1:46am »
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Oh, I agree with Mr. Ivey about the provisionals.  I don't like them because people often skimp and don't do it right.  They try to save money, but it just costs them more.  
 
The subject matter claimed in the corresponding patent is supposed to be enabled in the provisional.  In my experience, this is where the skimping takes place.  
 
It takes a lot of time to write an enabling disclosure for claims that have not yet been written.  You may as well just write the claims first.  Well, now I may as well do the summary.  Assuming one puts a background in their provisional and has the drawings, you are just missing the abstract for a complete patent application.  
 
Greg L. Martinez
SolidStateIP www.solidstateip.com
 
 
 
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Greg L. Martinez
SolidStateIP
www.solidstateip.com
www.solidstatepatents.com
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