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[TES111]

Hello all new member here with a new type of fishing boat.  The concept is for a small personal water craft specifically designed to go out and fish or hunt from.  I have a provisional patent filed. I also have a working prototype.  It has also been published on the web at several locations so that I can monitor the feed back from these web forums.  I have recently spoken to some leaders in the small boat / fishing communities and have been steered toward a company.  I spoke with the VP and he said that I should forward my information and pictures of the prototype to the President as he would be the one to make a decision.

What should I do to further protoect myself and my invention.

Before I send anything should I send a NDA? 

Is my provisional patent enough protection?

Is the fact that it is currently published and disclosed on several sites additional protection or a hinderance?

Thanks in advance,

Tayler

[klaviernista]

Negotiate an NDA with the company before disclosing anything to them.   Ensure that the NDA states that you retain all rights to the invention and that your discussions with the company do not convey and express or implicit license in the invention.

Depending on how well fleshed out your provisional is, it could provide excellent protection or no protection at all.  Who prepared the provisional application?  Also, your provisional application will not provide any protection at all unless you convert it to a non-provisional application within one year from the provisional application filing date. You should also think about where you want to sell and manufacture the invention.  If any of those places are not within the U.S., you should consider filing for foreign patent protection either under the Paris Convention or through the PCT.

"Is the fact that it is currently published and disclosed on several sites additional protection or a hinderance?"

Could be a significant hinderance if the provisional is deficient, particularly if you want to file for foreign patent protection. 

Sorry for the somewhat vague answers, but it is difficult to provide detailed answers without further information regarding your particular situation.  You should consider engaging a licensed U.S. patent attorney for substantive guidance.

[JimIvey]

What should I do to further protoect myself and my invention.

You'll need a real patent application on file prior to the first anniversary of your first publication of your innovation(s) (on the web or otherwise) -- or before the first anniversary of the first publication by anyone of your innovation, if someone else had similar ideas and published them.

Before I send anything should I send a NDA? 

It will have no effect to the extent the same information is available online.  NDAs only protect secrets, not publicly available information.

Is my provisional patent enough protection?

It's no protection whatsoever.  A provisional application (no such thing as a provisional patent) is an incomplete application, becoming a complete and real application provided that you do more.  Hence, the term, "provisional."

It only provides protection of priority for your later real application(s) if it meets the legal requirements of a real (non-provisional) application.  

Is the fact that it is currently published and disclosed on several sites additional protection or a hinderance?

A hinderance for obtaining protection.  Depending on how well your provisional application meets the legal requirements of all applications, provisional or real, you may have forfeited patent rights outside the US, except for a small handful of other countries.

Generally speaking, intellectual property (especially patents and trade secrets) are only available to those who insist upon such protections as a precondition for taking their ideas to market.  If your provisional application was prepared with care by someone who knows what they're doing, you're probably in okay shape.  Otherwise, you could be on a path to donate your innovation(s) to the public domain.

The good news is that your publications are also a hinderance to others getting intellectual property on your innovations, assuming concurrent independent development.

Regards.

[klaviernista]

Just a bit of clarification, which I hope will serve to rectify the differences between my earlier post and Jim's immediately preceding post.  For a provisional to have any value at all, it must meet the requirements of 35 U.S.C. 112, first paragraph.  That is, it must sufficiently describe the invention such that one of ordinary skill in the art at the time the invention was made can make and use it without undue experimentation.  That is somewhat difficult to do at times, as the 35 U.S.C. 112 requirements relate to the "claimed" invention, and provisional applications frequently (though not always) do not include claims.  Regardless, the value of a provisional lies in the relative strength with which it meets the 35 U.S.C. 112 requirements with respect to the invention later claimed in a non-provisional application that claims priority to the provisional.

So, when I said that a provisional can provide "excellent protection," I mean that if the provisional adequately meets the 112, first paragraph requirements for a later filed non-provisional, the non-proivisional can properly claim the benefit of the provisional application filing date, vis a vis a claim of priority.  That is the long way of saying what Jim said in his post.  I.e., that a provisional provides no protection at all unless it meets the written description and enablment requirements imposed on a non-provisional application, and is in fact the subject of a priority claim made by a non-provisional filed less than 1 year after the provisional application filing date.

[klaviernista]

It will have no effect to the extent the same information is available online.  NDAs only protect secrets, not publicly available information.

I agree, but with one further point of clarification.  NDA's typically protect information that is not generally known to the public.  That information can be of a technical, business, or other nature (including trade secrets, know-how, and information relating to such Party’s technology, plans, research and development activities, engineering approaches, process methods and data, products, services, customers, operations, personnel, market information, financial information, capitalization, and other business affairs). 

It is rarely the case where a public disclosure will give the public the "keys to the castle," so to speak.  That is, such disclosures typically provide high level details of an invention, perhaps a few bits about pricing, etc.  But rarely will a public disclosure discuss important business related items such as perceived profit margin, market analysis, marketability, source costs, product development lifecycle analysis, etc.  Thus, while it is true that an NDA will not protect publicly disclosed information, it should protect related information that is not generally known to the public.

[JimIvey]

For a provisional to have any value at all, it must meet the requirements of 35 U.S.C. 112, first paragraph.  That is, it must sufficiently describe the invention such that one of ordinary skill in the art at the time the invention was made can make and use it without undue experimentation. 

The first paragraph of Section 112 also requires that the specification describe the "best mode" contemplated by the inventor(s) for practicing the invention.  This point is sometimes overlooked, even by professional practitioners.  This "best mode" requirement is what gives the US what many consider the most onerous patent disclosure requirements in the world.

That is somewhat difficult to do at times, as the 35 U.S.C. 112 requirements relate to the "claimed" invention, and provisional applications frequently (though not always) do not include claims.  Regardless, the value of a provisional lies in the relative strength with which it meets the 35 U.S.C. 112 requirements with respect to the invention later claimed in a non-provisional application that claims priority to the provisional.

Another important thing to note here is that "the claimed invention" is not as claimed in your subsequent non-provisional application but rather as claimed in the issued claims of your patent (if you get one).  Thus, it's not only important to have claims in mind when drafting your provisional application but actually have pretty darn good claims in mind and a wide variety of elements in the claims to have a diversified claim set such that some of those claims are reasonably likely to issue.  If your ultimately issued claims include things from the real application that were not in the provisional application (including any best mode you might have had -- and it's likely you had a lot of "best mode" (implementation preferences) in mind since you have a working prototype), your claims will not be given the priority of the filing date of your provisional application.  Depending on what happen(ed/s) between the filing date of the provisional and the filing date of the subsequent real application, you might be out of luck.  That's why I recommended filing your real application within one year of the first publication of your innovation(s) -- I was assuming the provisional would be inadequate to provide a priority date (many are not adequate).

If your provisional application was prepared with adequate care, you're probably in pretty good shape.  If not, I'd recommend you look things over carefully and see if you need some quick action to be as well protected as you'd like to be.

Regards.

[TES111]

I was told by a patent attorney not to make detailed claims as this would limit my options for the real patent.  He said to keep things open for specification on the real patent but to include every part of the invention inmy provisionsal.  I did include every part of the invention but I did not describe each portion in great detail. So as far as the invention is conserned it is listed in every detail but not explained on how you could do it exactly as I have.  I.E. the leg bone is connected to the knee bone, not the leg bone is connected to the knee bone via ligaments attached at point b to point c.  I do want to be able to put my invention out in front of people but I do want it to be protected.  The patent attorney I submitted this to said that my provisional was adequate and that my drawings were adequate. I only posted things on the web after I received my provisional patent info in the mail. It has only been two months since my filing and a month and a half since I shared it on the web.  Who can give me an Iron clad document to take with me to my meetings?

[JimIvey]

For what it's worth, my views on provisional applications are minority views.  Yet, I've asked for and have yet to see a sound legal basis for abandoning my views.

With that in mind, I believe that the majority (or at least a large minority) of professional patent attorneys and agents misunderstand and give incorrect advice regarding the use of provisional applications.

Beyond that, I suspect that either you were incorrect advised or that you misunderstood the advice of your counsel in this specific but very important way:  what you describe and what your patent covers are two different things.

Let me explain that more precisely as the statement was not entirely correct.  Your application has a specification (summary, detailed description, and drawings) and has claims (though they can be excluded from a provisional application).  A patent is a negotiated exchange between you and the American people (assuming US here).  You give a detailed description of your invention(s) such that American society benefits from the knowledge that you've given and the American people give you the right to prevent others from exploiting your technological contributions for a period of time.

The specification of your application is what you give -- your contribution to technological knowledge.  The claims define what you get to exclude others from making, using, selling, and importing in exchange for your technological contribution.

Generally, extra detail in your specification can only help the breadth of your property rights, not limit it.  Only extra details in your claims can limit your property rights.

Now, here's the caveat that many remember, forgetting the fundamentals I've described above: it's possible that language in your specification can limit the breadth of your property rights.  However, it's generally not so much about what you say in the specification but more how you say it.  You can describe very specific details as specifics of "illustrative embodiments" of your invention, but you should never describe those details as part of your invention.

Getting back to your specification (with the major caveat in mind)....  Describe too little detail and any claim related to that insufficient detail is invalid.  Describe too much and, oh well, you put more words into your application than you needed -- no harm to enforceability of your claims.  Accordingly, saying more in your specification is always better -- assuming you don't shoot yourself in the foot with ill-advised language (see the caveat above).

The ONLY place where less is truly more is in the claims.  Since it seems like your provisional application has no claims, saying less is ... well, less, not more.

I hope that helps.

Regards.

[klaviernista]

For a provisional to have any value at all, it must meet the requirements of 35 U.S.C. 112, first paragraph.  That is, it must sufficiently describe the invention such that one of ordinary skill in the art at the time the invention was made can make and use it without undue experimentation. 

The first paragraph of Section 112 also requires that the specification describe the "best mode" contemplated by the inventor(s) for practicing the invention.  This point is sometimes overlooked, even by professional practitioners.  This "best mode" requirement is what gives the US what many consider the most onerous patent disclosure requirements in the world.

That is somewhat difficult to do at times, as the 35 U.S.C. 112 requirements relate to the "claimed" invention, and provisional applications frequently (though not always) do not include claims.  Regardless, the value of a provisional lies in the relative strength with which it meets the 35 U.S.C. 112 requirements with respect to the invention later claimed in a non-provisional application that claims priority to the provisional.

Another important thing to note here is that "the claimed invention" is not as claimed in your subsequent non-provisional application but rather as claimed in the issued claims of your patent (if you get one).  Thus, it's not only important to have claims in mind when drafting your provisional application but actually have pretty darn good claims in mind and a wide variety of elements in the claims to have a diversified claim set such that some of those claims are reasonably likely to issue.  If your ultimately issued claims include things from the real application that were not in the provisional application (including any best mode you might have had -- and it's likely you had a lot of "best mode" (implementation preferences) in mind since you have a working prototype), your claims will not be given the priority of the filing date of your provisional application.  Depending on what happen(ed/s) between the filing date of the provisional and the filing date of the subsequent real application, you might be out of luck.  That's why I recommended filing your real application within one year of the first publication of your innovation(s) -- I was assuming the provisional would be inadequate to provide a priority date (many are not adequate).

If your provisional application was prepared with adequate care, you're probably in pretty good shape.  If not, I'd recommend you look things over carefully and see if you need some quick action to be as well protected as you'd like to be.

Regards.

All good points, Jim.  Thanks.

[TES111]

Well time is wasting.  I guess my next question is what implements do I need to have to protect my invention.  I need to strike while the Iron is still hot.  I will not however do so at my own peril.  I have put a lot of time into this and do not want to have it stolen out from underneath me.  If anyone here is capable of assisting me with the negotiations with this company I want to speak with you.

[JimIvey]

Well, at this point, it depends on what your provisional application describes (how it was prepared) and what you've disclosed publicly.  For now, let's assume the worst ... and something not so bad.

The not so bad thing is that you want protection in the US only.  The worst part is that the provisional is inadequate for relying upon its filing date.

In the US, you have one year from your first publication, offer to sell, and public use of your invention to file your application.  Accordingly, you can entirely ignore the filing of your provisional.

The deadline for relying on the filing date of your provisional application is in about 10 months.  Your deadline for filing within one year of your first publication of your idea is in about 10.5 months.  Unless you really need that half-month, I'd file a good, real application within the 10 months and claim the priority of the provisional.  Even if the provisional is not quite up to the full legal standard, it should provide enough uncertainty and extra work for the other side to be worth hanging on to.

If you really want rights outside the US, it's worth talking to a professional.  So much depends on your facts and your business objectives that it's impossible to sort out your likely costs and benefits without knowing most of the specifics.

When it comes to NDA protection, Klav is absolutely correct -- there may be some gap between what you've disclosed publicly and what you'd like to protect as a secret with business value (a trade secret).  So, NDAs may still have a valuable role to play.

You might also want to ask in the Copyright forum about the famous "Bonito Boats" case.  I remember really wishing it had gone the other way -- providing copyright protection to boat hulls.  My thinking was along the lines of "industrial property" as understood in Europe, but -- assuming I remember correctly (big assumption) -- the boat hull was considered functional and not eligible for copyright protection.  But, to the extent you want to protect against direct copying of your designs, you need to consider all protection options.  You might consider design patents as well -- probably a better form of protection for boat hulls, as a design rather than a technical innovation.d

I want to note that I don't entirely dis the use of provisional applications -- they serve a great marketing purpose by allowing you to say "patent pending" without much effort.  However, I would suggest that you don't assume that you're legally "protected" in a meaningful way by that filing.  Take great care to dot all your "i"s and cross all your "t"s when it comes to filing the real patent application.  And, note that every day of delay in filing your real application delays issuance of enforceable rights in the form of an issued patent.  If you need that patent sooner rather than later, consider not waiting for the full 10 months to file the real application.

I hope all that helps somewhat.

Regards.

[TES111]

I am not trying to be rude but I want representaion and an iron clad piece for showing.  Opinions are great but that is not what I am looking for.  Can anyone put something infront of me so that I may present this without loosing sleep.

[JimIvey]

I have a few thoughts on that.

First, you won't get anything even approaching that here in these forums.  This discussion is public.  If you want to engage an attorney or agent (for patents only), you'll have to talk with prospective counsel in private, not here.

Second, nothing is "iron clad."  I often tell people that the only patent without risk is an expired patent.  Everything has costs and risk and you try to manage those.  Your counsel's job is to help you manage those, and to speak on your behalf when what you say is very, very important.

So, if you want to just pay some practitioner some money and never ever worry that somebody else might try to use your technology without your permission, that's not something a practitioner can do for you.  However, a good practitioner can maximize your odds of success and minimize your costs along the way.

If this helps you sleep, you probably won't put yourself in much worse of a position by waiting a month or so before pursuing tighter patent protection while you go around and pitch your product(s).  However, to be sure that such is the case, you really ought to have someone who knows what they're doing look over your stuff.

Regards.

[bleedingpen]

Do the copyright laws still provide for boat hull registrations?

[TES111]

James'

I im considering doing just that.  I have a generic NDA. An attorney I was speaking with says that he provides a generic NDA for those that can't wait or will not wait for a patent.  He said that he can put together a more specific NDA tailored to my needs. I am assuming that it would include information regarding the company that I wish to pitch to so that there would be added protection over the generic NDA. 

Is this worth the money for the added protection? 
Is there added protection?


Thanks,

Tayler