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Is it Patentable?
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   Business Process
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bjansse
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Business Process
« on: Apr 30th, 2006, 5:06pm »
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I've seen a rising trend in business processes being patentable and protected by the USPTO. I have a novel idea for a new way of selling retail merchandise. I submitted a provisional patent application (PPA) last week. Is there any chance of getting a utilility patent in the future? What defines a patentable business process? Any advice will help. Thank you!
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JimIvey
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Re: Business Process
« Reply #1 on: May 1st, 2006, 12:17pm »
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Is there any chance?  Yes.  
 
A patentable business process is defined the same as any other patentable process, one that is useful, novel, and non-obvious.
 
Here's an old FAQ on the topic:
http://iveylaw.com/index.php?option=faq&task=viewfaq&artid=3& ;Itemid=5
 
Regards.
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James D. Ivey
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bjansse
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Re: Business Process
« Reply #2 on: May 2nd, 2006, 9:26pm »
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I recently went to a mentoring session put together by a local entrepreneur organization. An Angel Investor spoke to me without an NDA and tried to tell me that retail processes are not patentable. He invests primarily in the service industry and I would imagine has a lot of knowledge in the area of business process patents. Your helpful website seems to suggest to me that my idea is patentable, but angel investor said that it is not. I don't want to speak to the character of this individual, but do you think that my business idea is in jeopardy? It seems to me that he was trying to convince me not to file for a utility patent in the future. What would you suggest I do from here?
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JimIvey
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Re: Business Process
« Reply #3 on: May 3rd, 2006, 12:31pm »
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Well, how long has that angel investor been practicing patent law?  If it's been a while and he's experienced in the area, then I'd be curious to know why he thinks that.  Otherwise, I'd recommend ignoring him on what's patentable and what's not.
 
Now, if your is idea is stacking folded shirts largest-on-top instead of smallest-on-top, your problem is going to be more related to obviousness rather than being a "retail process".  In fact, many "retail" ideas have obviousness problems.  But that doesn't meant that your particular idea isn't patentable, and it's certainly not disqualified for being a "retail process."
 
Is your idea in jeopardy?  That's hard to say, but let's suppose for the sake of argument that your angel investor has bad intentions.  What are your rights to stop him from capitalizing on your idea?
 
First, all ideas start with trade secret protection.  He didn't sign an NDA and you told him your idea anyway.  Under such circumstances, you would have no trade secret remedy vis-a-vis the angel investor.
 
Second, patent protection.  That may or may not be available to you.  We just don't have the requisite information at this point.  However, let's look briefly at the patent consequences of describing your idea to the angel investor without an NDA.
 
In the US, there's no problem, yet.  Generally, telling one person without an NDA is not necessarily a public disclosure.  However, the angel investor can simply publish your idea as one he's considering on a web site somewhere and you've got your public disclosure and no recourse through trade secret protection.
 
In the US, you have one year from the first public disclosure to file your application.  If you care only about protection in the US, I would file before the first anniversary of having described your idea to the angel investor.  I wouldn't wait longer because you don't know what he's doing with the information and what roadblocks you might face if you wait longer.
 
If you care about protection outside the US (and the sense I get is that most patent protection outside the US is over-valued by patent applicants), you should probably file you application as soon as possible.  Most countries don't give you the one-year grace period, so you would have to have your application on file prior to any public discloure.  In fact, some countries may consider disclosure to one person without an NDA to be a public disclosure, so you may have already lost patent rights in some countries.  That would be determined on a country-by-country basis.
 
Some might suggest filing a quickly thrown together provisional application as soon as possible.  That's only helpful if your provisional application is as carefully thought out and drafted as a non-provisional application, so the money/time savings is marginal at best.  Of course, there are many arguably competent practitioners out there who will disagree with me.  But, so far, that's my opinion of the provisional application tactic.
 
Without trade secret or patent protection, the angel investor is free to use your idea without your permission.  Whether he will actually do so is a different question entirely and one I can't answer.  In addition, whether he will attempt to foil your patent protection by publishing your idea is another question I can't answer, but he seems to have the opportunity to do that if he chooses.
 
I'm not sure what you should do -- it all depends on how you answer those questions yourself.  Depending on your own motivations and business objectives, it might be sufficient to forego foreign patents and work on getting your US application on file within the year.
 
Regards.
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James D. Ivey
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bjansse
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Re: Business Process
« Reply #4 on: May 4th, 2006, 12:39pm »
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I was planning on filing for my non-provisional utility patent within a year. When I filed my PPA, I made it as close to a non-provisional patent application as possible. From what I understand, that should help. If he were to file a non-provisional patent application on the idea before I file mine, assuming the idea is patentable, would I have legal recourse? Would my non-provisional application be the valid one due to my PPA? Thank you again for your help.
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