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Is it Patentable?
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   One year rule and Patentability
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   Author  Topic: One year rule and Patentability  (Read 2667 times)
Bill Richards
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Re: One year rule and Patentability
« Reply #5 on: Sep 19th, 2006, 12:18pm »
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RE:  Richard's post.
I was referring to a PPA spec that did not properly support claims to the invention that was described in the publication.  I stand by my statement in that regard.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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Bill Richards
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Re: One year rule and Patentability
« Reply #6 on: Sep 19th, 2006, 12:34pm »
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102(b) cites a printed publication.  It must be "published" and that depends upon the facts.  (What constitutes "publication" is a complex question and small changes in the facts can change the outcome.)
So, to address your questions, in general:
1. If no non-disclosure agreement is signed, can normal development activity such as sending emails of drawings and descriptions to machinists for prototype RFQ's be considered a public disclosure and start the one year clock?  How many machinists?  If only one or a few, maybe not, but why not get an NDA?
2. If you are working with a machinist and the design is developed further during the prototype phase, would the date of the email communications related to the improvements, start the one year clock?  See A-1.  Also, why not get an NDA and include IP rights?  What if the machinist becomes an inventor??
3. What about sharing the details of a design with someone that can help its development?  See A-2.  What will you do if the other person becomes an inventor.  If he rises to the level of being an inventor, he will have all the rights to the patent that you do, including the right to license and the right to assign his rights.
4. What about web sites that allow you to upload drawing files and descriptions so that machinists can quote the manufacture of the product?  If no non-disclosure agreement is implemented, it seems this must be considered a public disclosure as well?  If the site is not password-protected and anyone can access it, the answer would most likely be "yes".  (Not a wise thing to do, BTW, since it makes it easy for someone to steal your invention.  And, it can be seen by anyone in the world with internet access.)
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William B. Richards, P.E.
The Richards Law Firm
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Re: One year rule and Patentability
« Reply #7 on: Sep 19th, 2006, 1:52pm »
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Bill -
 
We concur.  I was pointing out that the invention described in the provisional application may be a subset of the invention described and claimed in the non-provisional application.
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Richard Tanzer
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john2006
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Re: One year rule and Patentability
« Reply #8 on: Sep 19th, 2006, 4:32pm »
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Hi everyone,
 
Thanks for your replies.
 
Bill Richards had asked the question, why not get an NDA? A non-disclosure agreement is fine, but not everyone wants to sign them.  
 
Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years.
 
It may be desirable to go ahead and make the improvements public, just to keep anyone else from getting a patent on them. Then, get the new design to market and file an application a year after the date of publication. The inventor may want to do this simply to postpone the expense of filing an application, or just to buy some time to test the new product on the market.  
 
If your not interested in foreign patents, would this not possibly afford more protection and be a better course of action than keeping everything secret and  trying to have everyone sign a NDA ? How often are "inventions" actually stolen anyway ?
 
I have read that only about  2% of all issuing patents ever become a product that actually sells and makes a profit. Those are extremely bad odds, especially for an independent inventor, and something anyone considering filing a patent application should strongly consider.  
 
The truth is, the majority of independent inventors can't give their inventions away, let alone have someone undertake the time, expense, and risk involved with stealing them. Additionally, most independent inventors don't have the money needed to defend their patent rights even if infringement takes place.  
 
Thanks again for your help.
 
Sincerely,
John
« Last Edit: Sep 19th, 2006, 4:35pm by john2006 » IP Logged
Sudhir Aswal
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Re: One year rule and Patentability
« Reply #9 on: Sep 20th, 2006, 3:05am »
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John,
 
I agree with Richards that no chances should be taken with an invention and NDA must be signed. As an inventor it is in your interest also and practically it does not harm the perosn signing the NDA being only restricting its disclosure.
 
I would suggest that if some good years are left then non-obvious improvements and modifications can also be patented as a Patent of Addition and no renewal fees shall be payable fot it anually. Further as it relies on the main invention its prosecution is less burdensome. It is also available to you to patent the new non-obvious  improvements as a an individual patent and get a full 20 years protection.  
 
It is not desirable to make the improvements public, as along with other it will also take away your right to get a patent on them. Publication does not include selling and trail testing the market therefore you wont be eligible for grant after that selling.  
 
It is necessary for both domestic  as well as international market. I dont think by exposing the products to market you would be entitled to keep it secret. Signing NDA is not a big deal and instances of  "inventions" actually stolen are very high, you see there are a number of proceeding for wrongful obtaining, opposition, Revocation etc. in Patent Offices, Courts etc.
 
Hope it will clear you of all doubts.
 
Regards,
 
Sudhir Kumar Aswal
 
I have read that only about  2% of all issuing patents ever become a product that actually sells and makes a profit. Those are extremely bad odds, especially for an independent inventor, and something anyone considering filing a patent application should strongly consider.  
 
The truth is, the majority of independent inventors can't give their inventions away, let alone have someone undertake the time, expense, and risk involved with stealing them. Additionally, most independent inventors don't have the money needed to defend their patent rights even if infringement takes place.  
 
 
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Sudhir Kumar Aswal
Patent Attorney, India
Aswal Associates
www.aswalassociates.com
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