Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Alex]

Hi everybody,

I never post any topics here but I've regularly looked over this interesting forum for several years, that's very good professional site. Thanks.

Actually I'm a scientist having some experience in patenting, I mean, I have my own patents in production. And now I feel I need some help. For several years I've worked with some idea, let say this is science intensive stuff in area of plasma physics but very practical in nowadays automotive industry regarding to internal combustion engines. And it is able to get some very unique improvement on a combustion process, fuel consumption, emissions, etc. Well, I don't want to bother anyone with the numbers and theory.

Now I'm on a stage of preproduction. I stepped over research, design, prototyping. And I guess during a month the product will be in a market in some limited series. Actually everything is ready to apply for the patent in couple-three days. But my feeling is very contradictory about this. I don't see any profit in my situation filing the application, I don't believe in patent protection and patent system itself especially for complex high-technology things (did anybody see the patents for space or military technologies?).

So, patent filing pluses:

- probably some protection in the far future for product replication in mass production;
- and nothing; yes you can mark the product as a patented, or put on a wall nice looking piece of paper.

Minuses:
- open the technology secrets prematurely;
- spending money and time, big money and lots of time;
- giving cause to anybody to replicate the patent changing "couple nuts" without understanding a kernel just for manner making money on others achievement.

So, I think to start my business braking some common rules, no patent for a while, using some, let say, hardware-software protection for the product. I know one thing, any reverse engineering in this case takes more time than I've got, and for sure I'll be for several steps ahead.

So, my questions are:

- have I any time reserve to go with common patent rules if the product in production;
- is anybody able to make a patent for that product and raises a claim against;
- is small production a real public disclosure if I save some trade-technology secrets;
- could I file the application during one year of production.

I would really appreciate your opinion and advice what way I have to go, or any thoughts about.

Sincerely,
Alex

[JSonnabend]

Alex -

From your post, I think you have some basics about the patent system wrong (e.g., that someone avoids infringement by "changing a couple of nuts", or that the patent does nothing other than providing the patentee with "a nice piece of paper to hang on the wall").  Rather than presenting a patent law primer, I'll simply suggest you contact a qualified patent attorney to discuss the matters.

In short, though, you should assume that you will not be able to obtain patent protection  once your product has been in public use more than a year.  Also, you may consider that trade secret protection, while often valuable, does nothing to stop people from reverse engineering your product.  That's something to consider, I think, if your invention relates to internal combustion engine technology or the like.

- Jeff

[Alex]

Jeff, thanks for the comments.

I'd like to just a little clarify the situation.

First of all, automotive <-> oil industry is very specific area, let say forbidden for some innovations. It is not just my words, it is my experience. And I'm not in a position to launch a war, and I don't want to do it because I'll be dead. So, my aim now is to get an initial market and public-practical approval. I really don't worry about reverse engineering, the most of IP is in a well closed chip, to open it you have to spend at least half a million. But on the other hand, if somebody want to get it, it means the technology is worth it. But anyway the key (theory) is in my hand, and I'd like to play this game as long as it's necessarily.

I've got many and very different suggestions, and from professionals too. I'm not waiting for "what exactly to do".  I'm very interested in overall opinion of this community, and believe it will be useful for other people in a discussion.

Thanks in advance,
Alex

[JSonnabend]

I'm glad to hear you've been in consultation with professionals on this.  To the extent that your invention includes copy protected technology contained in a computer chip, the DMCA may provide you with some protection -- at least in theory -- against reverse engineering.

I'm not sure what you mean by "you'll be dead".  Contrary to popular belief, the little guy can take on the big guys and win.  It just takes a good patent, a good attorney, and perseverance.

- Jeff

[Alex]

Jeff, "I'll be dead" is only expression, nothing frightened. I mean it just regarding to idea.

Unfortunately not everything in this world goes by low and conventional rules. Don't want to tell my personal story, just by the way, this is a second attemption to get in life this technology. At those time I dropped everything from small production stage, and changed my field of action for many years. I had a reason to do that.

And now I don't want to make same mistakes, and am going to do it quietly up to right time and place.

So, get back to the topic. Let say, I have proven technology which can be protected electronically for some period of time. I want to start  the production without patent application, and to watch for the situation when I'll really need it. The product will go with no advertising through limited community of the consumers with special terms of using it.

What is my risk on that?

Thanks,
Alex

[JSonnabend]

Once you have released the techonology to the public, even if it is contained in a copy protected chip, you're risk of being barred from obtaining patent protection is very high unless you file your application within a year of that initial release to the public.

[Alex]

Thanks, Jeff.

Sure, I very understand that everything should be done in one year from the public disclosure. The main point is to hold some secrets for a while up to I'll be really need to open it and applying for the patent.

My other question, how long does USPTO hold the application before it goes to the public?

Thanks,
Alex

[Patent]

One of the things a good patent attorney/agent would do is to write the claims in the most broadest meaning. If you work with a good patent attorney (assuming you are granted a patent), it should in theory cover more than what you are trying to hide.  It would be written in such broad language that changing a nut or bolt would not prevent someone from infringing the patent.  That can be done only when the claims themselves are pretty narrow to begin with.

One draw back of patents is that it is for a defined period of time and hence if you think the technology you developed is such that no one can reverse engineer for next 20 years or so, then there might be some advantage in not disclosing the technology. But, as a scientist myself, with highly competitive world, I would not count that myself.

Another scenario, that it might not be good to patent is that if you have developed a "scientific principle" which is not patentable. Then you would be giving away the principle by filling an application but end up without a patent protection to the "scientific principle".

Remember, that this is not a legal advise and only my opinion.

[Alex]

Thanks, Patent.

You are right. I called all these things as the technology because there is not an idea only or some simple mechanism. If take it apart, there are scientific principle (calculus, experiments, theory) which is not patentable, and hardware algorithm (electronic device) which allows to realize this principle in practical way. On the other hand, the device contains secured chip with most of control algorithms, and external circuit accessible for everybody who has the device. Even you have it opened you'll be far from replicating this without understanding the details (theory and controls) because the system is very dynamic.

The only my concern is those external electronic algorithm, it is for sure patentable, and can be used even for different purposes. It is what I actually want to patent, but no more, maybe for a while. I don't worry if somebody will use it, I worry if this somebody is going to make a patent to infringe on me.

And again, what is my risk if I start the production without a patent, let say for half a year, and then apply for it. Is it possible that somebody can get a patent for device that is not widely advertised, but in public production starting much early???

Thanks,
Alex

[JSonnabend]

Alex, unfortunately Patent is wrong in just about everything he said.  

A good patent attorney will draft claims beginning with very broad claims and gradually narrowing to narrower claims.  The reason for this is simple: broad claims stop more potential infringers but are more succeptible to invalidity attacks.  The inverse is true for narrower claims.  

As for "holding back" secrets from a patent disclosure, doing so is a recipe for disaster.   The quid-pro-quo for the patent monopoly grant is that the inventor advances the state of the art by fully disclosing his invention.  This principal is codified in section 112 in the enablement and best mode requirements.

As for "developing" a "scientific principle", scientific principles are not "developed", they are discovered.  If your invention applies a newly discovered scientific principle to achieve some useful result, then your invention is protectable subject matter.

To be blunt, if you're serious about protecting your invention, either through trade secret or patent law, you need to speak with an attorney.  If you've done that already, I'm not sure why your seeking a second opinion (or opinions) here.  One opinion from an attorney you trust is all you need.

- Jeff

[pzura]

Jeff is absolutely correct.  By discounting your patent rights, you stand to potentially lose everything down the road.  Think of it this way - by not patenting, you are serving as an R & D outpost for all your competitors, or anyone else that wishes to profit from your ideas/concepts.  As Jeff said, you should speak to a registered patent attorney about the specifics if you are serious about protecting your device.

If you want to wait a year before filing for a patent in the U.S., that is certainly a viable option.  Some inventing entities like to market-test products before filing for any patent protection (often referred to as "reactive patenting").  The advantage here is that you can fiddle with the invention and possibly discover other useful features you didn't originally know.  However, keep in mind that under foreign law (e.g., Europe), you lose your rights to a patent the moment your invention is disclosed or sold.  So if you have any inclination to file for patent protection abroad, you'd better get something on file as soon as you can.  Also, you need to keep VERY close tabs on what you disclosed to other people and when.  The one-year time limit starts from the moment you disclose your invention - not necessarily when you start selling or using the invention.

[JSonnabend]

Some inventing entities like to market-test products before filing for any patent protection (often referred to as "reactive patenting").

PZura makes some good points.  To clarify one point, while the one year period to file your application after public disclosure may not start when a disclosure is for testing purposes, economic testing (e.g., testing market demand for the product), does not count as "testing" for these purposes.

[Alex]

Thanks Jeff, Pzura.

Generally, there is not only patent law problem in my situation. Mostly there is economic / technical contradiction. Let me describe in some example. Assume we have an automotive device with unusual features, and moreover based on "crazy" scientific concept. We have two engines to test this device: 30 years old very simple one, and other very modern with everything what the people can make in this period (ECU, lots of valves, sensors, etc.). Let say, the efficiency of each before the test is 1.0 for new one, and 0.8 for old one. During the test we've got not bad result of efficiency: 1.1 for new one, and 1.2 !!! for old one. What the hell! Old one is better than new one! (For the reference, 10% difference of efficiency in automotive industry is incredible. The companies spend millions of $ to achieve 1%.)

Go to economics. What does it mean the result like that. At first glance, that's perfect! Go ahead, get a patent, start up the company!...  Stop guys! It's not so easy. Don't forget it is automotive/oil alliance. Don't forget how much money (and power) there in a circle. Don't forget how many patents, startups, and big investors were to achieve those 20% from 0.8 to 1.0. And everything is working, everything makes huge money.

And unfortunately the law, particularly patent,  is stopped to be working at some point than as it should be. I'm not waiting from you, guys, any well-defined advice. I just want to discuss my concerns in good community I like. Maybe I'll get more useful things simply listen your discussion. And all I want now is to do my job, and don't be scary that somebody using his money and existing law and patent system will bother or stop me as it's happened before. (PS Some time I offered my research for free for government institutions. What's happened you could guess.)

So, I hope this topic will be in life. And I very welcome your discussion.

Thanks again,
Alex

[Penny_Ballou]

- (a) open the technology secrets prematurely;
- (b) spending money and time, big money and lots of time;
========================================

1. If Alex is the U.S., what about a Provisional?

It would appear he is of sound mind so could possibly write it himself especially if he gets a handle on terms such as: enabled, best mode, and preferred embodiment and uses an outline from a patent in his field of invention as a guide. On the other hand, of those I've read written by independent inventors the weakest two links have been (i) lack of adequate disclosure (ii) going into "too much" minutia.

2. If he reviews downsides to it, it might appear a good solution to each of his above two issues. But first, I suggest he review the following articles :

---"The Problem with Provisionals": www.spectrum.ieee.org/WEBONLY/resources/jun03/inve.html

and

---"I think I need a Provisional application. What do you think" : www.iveylaw.com (cursor to FAQ section to find it).

3. If he intends to publicly disclose it, so be it. But he could do both by filing a provisional before he exposes it which would accomplish, if only for one year from its from filing date, the right to mark it and promo materials "patent pending".

4. It would accomplish (b) since cost to file is merely US $80.

5. Who would know that only a provisional and not a formal had been filed, no one. It would drop into a dark hole at the patent office discoverable by no one.  He would then acquire up to one year from filing to work out any production bugs, correct them then include into the formal any new material acquiring the later filing date. It would buy him to make money on the front-end and pay later on the back end. A cost shifting tool if you will.

<<My other question, how long does USPTO hold the application before it goes to the public? <<

The answer would appear to reside in whether or not you will file a "Non Publication Request" [SB35]
when filing a "formal" application. If not, the answer would be eighteen months after filing irrespective of whether you had received a Notice of Allowance (doubtful) or whether the application had reached an examiner's desk or not. I suggest you read the base of that form found on the PTO "Forms" page for it provides, for want of a better phrase, a "change your mind" time period.

PB