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[tvinals]

Hello there ,
i hope you can help me.

I have been developing an idea for 18 months and got to the stage of searching patent databases.
i am in the uk and unfortunately i found an identical product is already patent pending in the us.
This is where i become confused, so i hope i make sense!
It appears the inventor applied for a patent or PCT through the WIPO. Am i right to assume that if i attempt to patent this idea in the UK i will be refused as his application will come up in my search? I accept he got there first and it is his idea, but he appears to have missed the deadline to patent his product anywhere else but the US (he applied for a european patent but failed to pay the fees in time and the document has been withdrawn).

Am i right to assume:

A) he has no protection outside the US and anyone can produce his product and sell them outside the US

B) he has a 'worldwide exclusive' on the idea, i.e. i cannot patent it in the UK

C) The UK is now a 'free market' for this product and will be forever more as no one can ever patent this particular product again.

D) There are two stages of patenting. Firstly, getting a patent for your idea worldwide, and secondly getting protection for your      idea/product in the countries of your choice within twelve months of your initial application.

once again, i hope someone can help, i have spent hours trawling the net looking for this information.

Many thanks.

Tom

[Kaitlin]

Hi Tom,

First, just a thought: you might get more people looking at your post and replying if you re-word your subject to focus on the particular legal issue of the inquiry.  (E.g.: "Does US patent pending preclude UK filing?" or  "Does failed PCT filing open the UK market when US patent pending?") In that way, people with some knowledge of the issue will better spot it while perusing the general list and be more likely to jump in if they think they can help.  (My philosophy/poli-sci background, e.g., predisposes me to read "Is this a free market" as a discussion of economics. )

I'm not a patent attorney, but did practice US patent litigation, so I'll take a stab at a general response which I hope helps a bit:

My understanding is that in most if not all countries, all it takes to preclude you from getting your patent (on grounds of it's not being new or "novel") is for someone else anywhere in the world to have made public the same invention -- whether patented or not -- prior to your first publication of the work.  (In the US you have a year from the time you first make your invention public in which to file for a patent, but I believe that is not the case in Europe.)  If the patent examiner finds "prior art" which "reads on" the proposed claims of your patent, you're out of luck.  The prior art does not have to be patented, it only has to have been made public. 

The advantage to someone having a patent is that they can preclude you from making, using, selling, etc. the invention if their patent grant extends to cover the jurisdiction you are operating in.  If the prior art is not patented, then it just keeps you from getting a patent yourself.  (A US patent would keep you from making/using/selling/importing the invention in or into the US.) 

So my guess is that you're generally right as to A and C (although the lawyer in me wants to caution you that there could be extraneous facts not provided which might alter that).  B would be right as to the conclusion, but I wouldn't call it having "a 'worldwide exclusive' on the idea."  As for D, I don't think you have that quite right, but it involves more complexities of the various countries' patent prosecution practices than I can go into.   

Hope this helps (and I invite any patent attorneys here to step in and correct whatever I've got wrong or add any other helpful info re the specific questions raised).

[DogDayPM 9er9er9er]

A) he has no protection outside the US and anyone can produce his product and sell them outside the US
B) he has a 'worldwide exclusive' on the idea, i.e. i cannot patent it in the UK
C) The UK is now a 'free market' for this product and will be forever more as no one can ever patent this particular product again.
D) There are two stages of patenting. Firstly, getting a patent for your idea worldwide, and secondly getting protection for your idea/product in the countries of your choice within twelve months of your initial application.

Hi Tom.  Agree with Kaitlin's comments and to add a bit more explanation:
A) "It Depends".  Based on your description, a product maker/seller outside the US would be safe in view of the other guy's US-only patent/application.  But, that's not to say someone else doesn't also have a patent in the US or EP, etc. that also covers the product (or a part of the product).
B and C) With the other guy's published application, you're correct that no one SHOULD BE able to patent it anywhere (but humans - inventors and patent Examiners - do make mistakes).  Also, a relatively small "tweak" to the product might be viewed as an inventive tweak, which could be patented.  So when you say an "identical" product is already patent-pending, does this mean "really truly identical" or "pretty much the same thing"?  Sometimes the difference is patentable.
D) "Sorta".  A common life cycle for international patenting:  1st application filed in "home country".  Within 12 months, a PCT application is filed claiming "priority" to the 1st application (and any countries of interest which don't use the PCT are also filed at this point).  Then, within 18 months of filing the PCT application, other national applications are filed via the PCT application.  Alternatively, skip the PCT and file any national patents of interest at the 1-year point.  Note the word "application" in all cases, as people do sometimes confuse granted patents with published applications (e.g., what one sees published via the PCT is never a granted patent but rather a published application).  A published application does not give the owner any exclusionary rights, whereas the granted patent does.  In US and EP, look for a "B" designation following the document number to designate a granted patent.

[tvinals]

Thanks very much for the info, it was very helpful.

Sorry about the subject title, it is a bit random now i look at it again!

Since posting on the forum, i have investigated the situation further by spending more time reading through/half understanding various documents regarding the patent in question.
It appears i have overlooked that this is still a patent application, thanks for bringing that up Dogday!
Whats more, the application in the US has had a non-final rejection nearly six months ago, the examiner cited older granted patents which refute practically all claims made in this guys application.
Am i right in thinking that unless this guy responds with an updated application within the six months (by the end of June), the application will be abandoned?
 

[Kaitlin]

So glad to have helped somewhat, and that the patent people have joined in with more specifics.

Sorry about the subject title, it is a bit random now i look at it again!

If you want to, you can modify your subject line even after the thread has started.  After signing in, click "modify" on your original post.  (I think this will work even after subsequent posts have been added.)

[DogDayPM 9er9er9er]

Thanks ...Am i right in thinking that unless this guy responds with an updated application within the six months (by the end of June), the application will be abandoned?
 

At the risk of being repetitive, the answer is "sorta".  The time limit to respond to the office action/rejection is indeed 6 months, after which the application becomes abandoned.  Sometime after that, the patent office will send a "notice of abandonment" to the applicant's last correspondence address (this may take a few months). 

However, an abandoned application can be revived if the applicant petitions for revival and certifies that the delay in responding either could not have been avoided (fairly tough standard to meet) or was accidental/inadvertent (lower standard but costs more).  How long after abandonment the patent office will still grant the petition to revive is fairly fact dependent, but it generally comes down to what's reasonable.  I've seen petitions granted after even 2 or 3 years in special circumstances (a company split into 2 companies and ~ half the patents went with each - company A correctly filed the forms for new correspondence address but several years later the patent office incorrectly sent communications to company B.  Why the good folks at company B couldn't bestir themselves to forward the stuff is left to the imagination).