Pre-Non-Provisional Patent Scenario and Survival

[Jp]

Say that I get an idea for a new FigaMaGig and decide to construct a prototype, . .

then I decide to market it, but first, being the vain person that I am, . .

I decide to put a little pat. pend mark on it so, . . .

I file a Provisional Patent Application, then, putting my little pat. pend mark on my new FigaMaGig, I decide to sell it, . . .

somewhere along the line and after my documented conception date, a competitor decides to manufacture and sell the same product, . .

by this time it has been 10 months since my conception date and 9 months since my first public disclosure has gone by so, . .

I decide to try to stop the competitor from lousing up my chain store marketing connections and want to stop him, but I don't know exactly what to do, .
but seemingly more important, I decide to file a Non-Provisional Patent.

Since my financing past present and future is and will be a major concern, . .

Where do I stand as far as the SEC, (the Security Exchange Commission) is concerned where I am under obligation to report these and all activities that effect the profit and losses that the past present and future of the products marketing capabilities.

How will they view the business environment I am caught up in ?

 
The time here as I modify this post is 6:13 PM Nov. 6 2009, I may have taken twenty minutes to write the post the post time on the forum reads 4:27, . .
I guess you must be in the MT. Time Zone where the post was started as I hit New Topic at 4:27, . . OK I think that sounds about right ?
 

[JimIvey]

I'm a bit baffled by the concern re the SEC.  First, corporate law -- and SEC filings in particular -- are very far indeed from IP law.  Second, if you're a publicly traded corporation (and therefore within the purview of the SEC), I wouldn't think you'd have financial trouble with a single patent application.  See, without a publicly traded corporation, there wouldn't be any securities to exchange (at least not on a scale that would interest the SEC, only small private sales of shares).

If you're looking for enforceable rights against the competitor, "patent pending" won't do it.  To fully understand patent pending, imagine a playground.  You might hear a child say angrily, "my mom might get married to a guy with a bigger, older son, so I might have a bigger, stronger brother some day and you're going have to stop treating me that way!"  That's "big brother pending" -- much like "patent pending."

Well, to make the picture a little more completely analogous, imagine that the child can some day show a wedding invitation and a picture of the pending bigger brother.  Any aggressors can be beaten up by the bigger brother for any mistreatment from that day forward, but the beating cannot take place until after the bigger brother is no longer pending.  Something like "here he is, and I'm keeping a journal of mistreatment and you might get beaten up some day if my mom really goes through with the wedding."

In short, no enforceable rights until the patent is no longer "pending" and the payback at that time can include compensation for infringement activity while that application is still pending under certain circumstances, one of the circumstances being publication of the application.

Regards.

[Jp]

In short, no enforceable rights until the patent is no longer "pending" and the payback at that time can include compensation for infringement activity while that application is still pending under certain circumstances, one of the circumstances being publication of the application.
Regards.

Thanks Jim,

By, "one of the circumstances being publication of the application."
 What do you mean ?

[Jp]

In short, no enforceable rights until the patent is no longer "pending" and the payback at that time can include compensation for infringement activity while that application is still pending under certain circumstances, one of the circumstances being publication of the application.
Regards.

Thanks Jim,

By, "one of the circumstances being publication of the application."
 What do you mean ?


Also do you mean,
"the payback at that time can include compensation for infringement activity while that application is(was).(still), pending under certain circumstances,"

[Jonathan]

I try not to superfluously post on here but, whatever, it's Saturday.

Jim's last post scared me, not literally, but enough to keep me not wanting to marry. Not that I am unattractive bait but, now that I am almost 30.. Err.. 38...  Uhmm.. 40....

I wiill be ok.

[Jp]

I don't know Jim personally, but I imagine he is an attorney, and has his point of view based on facts, which I am trying to make clear to myself,  of course by asking him the questions I have asked.


Occasionally, I find myself, starting somewhere in the middle and expressing myself with mu thoughts as a subject of the conversation I am starting,

At sometime recently, I began trying to be a little more clear and to try to be
comprehensible, . . . I could elaborate on those short comings of mine, but please allow me to change the subject slightly, . .

May I ask you what is scary about what Jim has stated ?

[dablueman]

By, "one of the circumstances being publication of the application."
 What do you mean ?


Also do you mean,
"the payback at that time can include compensation for infringement activity while that application is(was).(still), pending under certain circumstances,"

It's all about notice. If your competitor is aware of your pending application,via the non-provisional application's publication, or otherwise (i.e. you notify them), then you could be compensated for "infringement" that happens before the the potential patent issues. There are a lot of exceptions from this, the biggest being if the claims are amended after publication. Note that a patent has to actually issue before you can sue, which means you'll have to file a real (i.e. non-provisional) application.

P.S. This is not to be considered legal advice. I'm not your attorney, etc. Also, if you're subject to SEC reporting rules then an internet forum is NOT where you should be asking questions. Go to your in-house attorney on Monday morning, do not pass go, do not collect $200. However, judging from your previous posts you're an independent inventor with financial problems, so I'm not sure why you're asking about the SEC.

[Jp]

It was merely a thoughtful example, taking into consideration that most invention commercialization's tae a good deal of money, either partners loans or SEC could come into the picture and therefore the statements that the borrower makes have bearing on the true facts, . . .

I will need to study a bit what you have said before I can make any comment on it, . .however, void a Provisional patent being filed, . .

If a public disclosure of an invention has been made, what are the circumstances that make a patent application, (provisional or non-provisional), invalid,
and or what circumstances would make a patent application, (provisional or non-provisional), for that invention valid by a competitor.

[JimIvey]

Apologies if my snarky example unnerved anyone....

My points are these:

1.  "Patent pending" provides no real "protection" in the sense of immediately enforceable rights. 

2.  The one clarification warranted by that first statement is that there is something called "provisional rights".  Only with your issued patent in hand, you can collect damages for infringing activity that occurred prior to issuance of the patent under certain circumstances. 

• The application was published.
• The infringer knew that the application was published.
• The claims in the published application are substantially the same as the issued claims.

I reiterate that you can only seek damages for "provisional rights" after the fact -- after the patent has issued.  So, any protection provided by "provisional rights" is very speculative until the patent issues.

But, the important thing to remember is that "patent pending" provides no meaningful protection except for a fairly vague and speculative threat of some enforceable rights in the future.

I understand it leaves people like you with clever ideas unprotected for what seems to be an unfair duration, but that's the reality of our patent laws as currently administered.

Regards.

[Jp]

OK, Before I become confuse, it could happen, let me get a grasp on some basic information;

According to the following definition ;

When is a patent application published?

A non-provisional patent application is published by the United States Government 18 months after the filing date of the first patent application filed (either a provisional or a non-provisional patent application).  An inventor can request that a patent application not be published if the
inventor does not wish to pursue foreign patent protection.

and the condition;

35 USC 102 Patent Law (A):
35 USC 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless

(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for patent, . . .

Disregarding, "published application", (I put that there for reference and clarity.)

A public disclosure describing an invention, not yet applied for, would constitute, "(a) the invention was known", correct ?

[JimIvey]

A public disclosure describing an invention, not yet applied for, would constitute, "(a) the invention was known", correct ?

Yeah, it could happen.  I'm not sure why the publication of applications summary was there.  If you're wondering whether a published application can be prior art for itself, it can't.

One important subtlety to observe is "before the invention thereof by the applicant".  It can be a bit tricky to describe your invention before you've made it, but there are some subtle nuances that make such a weird thing possible.  Skipping ahead to the answer, the way to avoid that awkward situation is to create a prototype and document its creation date(s) before making the publication describing your invention.  If you file the patent application before publication, no need to make a prototype.

Regards.

[Jp]

Now I see how involved such items that are in my original inquiry can get, . .

so, I would like to just get one thing at a time straight,

Let me see if we can get, (in this case), Public disclosure defined, . . .

I published in here  IP Forum a concept of inventions. so let me use one of them,

This would conception depiction would be practically identical to one I ppeviously posted, in the public domain.

http://i36.tinypic.com/2w2hunr.jpg

This illustration conveys the idea of a solar umbrella, . .

Another illustration was not posted here at IP but on my blog in the time span of about a week, after the, "idea", illustration was posted at Buy and Sell here in the IP forum.

http://i36.tinypic.com/sm4won.jpg

So, let me ask you do these illustration constitute a, "Public Disclosure", of an invention ?

[JimIvey]

Now I see how involved such items that are in my original inquiry can get, . .

I'm glad you see that.  Some questions here are really hard to answer -- so many issues raised that it's hard to know where start -- very much like a law school exam question.

Hey, law school exams are useful after all!  (kidding, never doubted that)

So, let me ask you do these illustration constitute a, "Public Disclosure", of an invention ?

Let's be careful here.  102(a) speaks of "printed publications", not "public disclosures".  And, yes, I think that those images are printed publications -- though it might come down to how well those images are indexed.  How easy would it be for someone interested in that technology to find those images?  Do they show up in Google (or similar) searches by keyword?  If not, you might be able to get past them.

Perhaps you're beginning to see why each and every answer hear seems to begin with "it depends".  It does, always.

And, even if those are printed publications and qualify as prior art, what do they really teach?  How enabling are they?  If your claim (yep, need that for context) recites only PV solar electric collectors on an umbrella, those probably enable that.  Incidentally, I may have just linked your images to keywords so they might show up in web searches.  Sorry about that.

I would imagine your application (and perhaps your claims) would go into detail how to make such a combination work such that the umbrella functions as a conventional umbrella -- i.e., folds nicely without undue wear on the PV panels.  So, attaching and folding details might appear in the claim(s) that aren't shown in the images.

I could go on and on about just this one issue.  You can see why I decided long ago that I could post here for free without hurting my business -- no matter how much I type here, it's always just the tip of the iceberg.

Regards.

[Jp]

That's pretty much what I am thinking not having fully digested what you are saying.

Public disclosure is something that I am feeling is positive, rather than trying to hide this, because it enforces a "disclosure", there is also the disclosure document that concern other details that probably will eventually be the bases for elements. This is or will be what is in the Provisional Application.

But, are you saying that if the disclosures as I have presented them in the illustrations are hard to find that they may not be considered publications ?

[JimIvey]

That's pretty much what I am thinking not having fully digested what you are saying.

Public disclosure is something that I am feeling is positive, rather than trying to hide this, because it enforces a "disclosure", there is also the disclosure document that concern other details that probably will eventually be the bases for elements. This is or will be what is in the Provisional Application.

Disclosure documents don't do what most inventors think they do.  People get all caught up on "first to invent" and think all you have to do to establish patent rights is prove first to invent.  "First to invent" rarely comes into the picture in getting a patent.  A provisional application is a really bad idea in most situations in which they're used.  You can search these forums for my thoughts on that.

A patent is an inducement for clever people to disclose their clever ideas that they would otherwise not disclose without some sort of protection from others stealing their clever ideas.

If you're willing to disclose your clever ideas without such inducement, then you don't need and don't get the inducement -- i.e., patents for your clever ideas.

But, are you saying that if the disclosures as I have presented them in the illustrations are hard to find that they may not be considered publications ?

Yes, they might not be considered "printed publications" as used in 102(a).  Then again, you'd be required to cite those to the examiner as potentially material information and I'd be surprised if an examiner let you off the hook for lack of an adequate indexing.  You should be prepared to fight over that issue if it's needed to get your patent.

Regards.