Clarity in provisional vs. publication

[fb]

Thanks for the detailed response. I've also been reading more about abandoned/withdrawn apps. They seem to have a purpose sometimes.

If you want rights outside the US, you had better get a proper and complete application (whether provisional or real) on file before either of you publishes.

Yes that is the focus here and now.

If provisional #1 never serves as a right of priority to another application and is abandoned ("expired" more accurately, I believe) with no rights at all remaining, provisional #2 can be considered the "first" application anywhere in the world for the invention.
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Oops, bartmans might be right, unless you expressly abandon provisional #1 before filing provisional #2.

Well yes, the idea would indeed be to stop one app before proceeding to next one.

First, you'll have to have a proper and complete application on file (and not abandon it) prior to publication by anyone if you care about rights outside the US and a handful of other countries.  For example, in your example, if your competitor publishes before you file provisional #2 (and I'm assuming your provisionals are written as well as non-provisional, real applications), you'll need to maintain the priority date of provisional #1 for rights outside the US.

Second, and more subtly, I don't see why you keep re-filing applications on the same invention.

The main reason is because the invention is changing weekly, almost daily. It was only conceived four weeks ago. A main concern is that if an NPA is filed now, it might need to be changed drastically in a few weeks. Yes it would take care of the UK competitor if he publishes, but the amount of projected NPA revisions seems to be a drawback.

However if a series of provisionals (one abandoned as the next one is filed) will take care of the UK publication, and, allow ongoing revisions easily, then maybe it would acceptable.

After reading about abandoned/withdrawn NPA's, maybe they would indeed be the better route. An NPA filed now would take care of the UK publication concern, and could be withdrawn/amended if major revisions are needed.

If the above is all true, then two determining factors (between provisional or NPA) would be time for first app to be completed (in days), and cost for repeated filings/withdrawals (maybe 10 in six months).

If the improvements are non-obvious, those can be separate applications for the non-obvious improvements.  If provisional #1 is adequate to protect the basic idea, it should do.  No need for provisionals #2 and #3.

This might apply here. There is one main aspect of the invention which allows it to function, and there are about seven related aspects which help it function better. But without the main part, there is no invention. So maybe this main part can be drawn up first, as you said.

Although, I think the provisional vs. NPA option still applies.

[fb]

I should add that if the provisional route were taken, then if the UK competitor did post the same invention online after my provisional, then an NPA would be of course filed.

[George White]

Why would you abandon provisional N as you filed provisional N + 1 ?  The only reason I can think of relates to moving the "first filed" as per Paris from one to the next. If the applications are very different from one another then each might be the first covering its subject matter - no need to abandon one before filing the next - they are all "first". On the other hand if they were largely overlapping I would think you would want to get the benefit of any and all provisionals filed within the one year before you file the NPA.

--George

[fb]

Because I think the one year will expire before the invention is in it's final ready state. So, by dropping the old, and starting the new, it can be filed on the correct final working version. My preference was to keep it to myself until it was ready, and then file NPA (or PCT). But the UK fellow is upsetting the apple cart.

[JimIvey]

The main reason is because the invention is changing weekly, almost daily. It was only conceived four weeks ago. A main concern is that if an NPA is filed now, it might need to be changed drastically in a few weeks.

Are those weekly changes non-obvious, revolutionary changes?  or tweaks?  A well-written application should cover all tweaks and not require any changes as the technology continues to evolve.  Sufficiency of the application, including the best implementation contemplated by the inventor(s), is measured as of the filing date.  If you come up with better implementations for the technology after filing, there's no need to include those in the application.  If the application was written well, the better implementations should be covered by the claims.

Yes it would take care of the UK competitor if he publishes, but the amount of projected NPA revisions seems to be a drawback.

However if a series of provisionals (one abandoned as the next one is filed) will take care of the UK publication, and, allow ongoing revisions easily, then maybe it would acceptable.

An explicitly abandoned application (without any children application pending) is exactly the same (legally speaking) as never having filed it at all.  So, how that will solve anything for you is beyond me.

Perhaps you're thinking of abandoning and re-filing applications until that one guy publishes, leaving at least one application pre-dating his publication.  First, that's messy and extremely easy to screw up.  Second, one application covering the general, yet non-obvious, idea behind your technology should suffice, even if your implementation changes over time.  Third, are you sure no one else is working on the same idea and might publish somewhere you're not watching?

This might apply here. There is one main aspect of the invention which allows it to function, and there are about seven related aspects which help it function better. But without the main part, there is no invention. So maybe this main part can be drawn up first, as you said.

Is the other guy about to publish all eight innovations?  If only the main innovation, I'd start with that.  At least it appears to be stable.  Of course, you'll have to describe your preferred implementation(s) in your application.  But work can continue after filing without requiring dramatic changes to the application.

Regards.

[fb]

Are those weekly changes non-obvious, revolutionary changes?  or tweaks?

Well aside from the core concept which cannot change, one other concept is important. The rest are  tweaks.

If the application was written well, the better implementations should be covered by the claims.

I see. So skill in writing claims would include forethought into possible tweaks.

Perhaps you're thinking of abandoning and re-filing applications until that one guy publishes, leaving at least one application pre-dating his publication.

Yes that was exactly it.

one application covering the general, yet non-obvious, idea behind your technology should suffice, even if your implementation changes over time.

I see. It goes back to the well-written claims.

are you sure no one else is working on the same idea and might publish somewhere you're not watching?

No I'm not sure. I've barely had time to get the concept into text form, much less do any searching. I do know that it would be very easy for the UK guy, or several others, to do it by accident. Something needs to be filed this month.

Is the other guy about to publish all eight innovations?  If only the main innovation, I'd start with that.  At least it appears to be stable.

If he posts (publishes) it will just be the one core concept; he has no idea about the rest, nor is he very near to finding them.

It looks like a search and NPA (or PCT) filing need to be done now.

[JimIvey]

I see. So skill in writing claims would include forethought into possible tweaks.

Yes and no. 

Preparing claims should always involve trying to guess what variations others could try.

However, if your claims cover the broad idea, they cover all details that others might add to the basic idea. 

For example, let's suppose you've invented cold fusion using peanut butter, and you patent that.  Then, suppose that one of your improvements is that unsalted crunchy peanut butter works best -- only discovered after you filed the first application.  That improvement is covered by the first patent.  You would only patent your improvement if you think unsalted crunchy peanut butter provides enough of an advantage above and beyond the basic patent.  For example, you might not get the first patent issued, or you might end up in a cross-licensing deal in which it's hard to extract much capital from that basic technology.  Then, the added advantage of IP rights in unsalted crunchy peanut butter cold fusion might be worth its own patent.

I hope that clarifies.

Regards.

[fb]

Ok I guess that clears it up... need to file now. I should also do some searches quickly... is there a page on here that lists the various foreign search sites?

[JimIvey]

Here's a good place to start for searching patents:
http://worldwide.espacenet.com/

Of course, any publication can be prior art, not just patents.  For other publications, here's where I search:
http://www.google.com/  ;-)

Regards.

[fb]

Thanks, I'm familar with both 

The fellow in the UK however, really looks like he is going to post something in the next few days. I've talked to a few attorneys, and they say it will take 1-2 weeks for a provisional, and 3-4 weeks for an NPA. I have my amateur self-written invention description, with diagrams and 8 "claims", ready to send in as a provisional today; If I file it tomorrow, and he does post in the next few days, will this not still allow my patenting process to continue? And of course, if he does not post, then I'll get an NPA filed with no reference to the provisional; in other words the NPA would be drawn up correctly, with nothing bad having to be taken from my provisional.

[JimIvey]

I've talked to a few attorneys, and they say it will take 1-2 weeks for a provisional, and 3-4 weeks for an NPA.

The mere fact that the time required to write a legally sufficient application is twice as much as to write a provisional application indicates that they don't intend to file a legally sufficient provisional application.  The people with whom you've spoken seem to share the popular misconception that there's some relaxed legal standard for provisional applications.  There isn't.

For what it's worth, I've written applications (real ones, not provisionals) in as little as a day or 2.  Of course, that depends entirely upon (i) availability at the time and (ii) the complexity of the invention.  My point is that there are people out there who can work faster than that.

I have my amateur self-written invention description, with diagrams and 8 "claims", ready to send in as a provisional today; If I file it tomorrow, and he does post in the next few days, will this not still allow my patenting process to continue?

Technically speaking, the patenting process will "go forward" regardless of what you file.  It will only cease to go forward when you absolutely need your provisional and it's inadequate.

For what it's worth, filing your own provisional is probably not any worse than filing a professionally prepared, legally inadequate application.

And of course, if he does not post, then I'll get an NPA filed with no reference to the provisional; in other words the NPA would be drawn up correctly, with nothing bad having to be taken from my provisional.

I used to think that linking a real application to a poorly written provisional did harm the real application, but not any more.  Originally (1995ish), people used provisionals only as an emergency measure, so linking to a crappy provisional was a bit of a red flag that some important event must have happened at a critical time, indicating that the patent might be vulnerable to challenge.

Now, it seems nearly everybody files a provisional application first, even if it's a really bad idea.  So, provisional applications are no longer a sign of a prosecutorial emergency.

Most importantly, while provisional applications might be a sign of this or that, there's no direct legal harm from linking to a weak provisional application in and of itself.

Regards.

[bleedingpen]

I used to think that linking a real application to a poorly written provisional did harm the real application, but not any more.  Originally (1995ish), people used provisionals only as an emergency measure, so linking to a crappy provisional was a bit of a red flag that some important event must have happened at a critical time, indicating that the patent might be vulnerable to challenge.

I disagree.  Linking to a poorly written provisional, perhaps one that is an information dump can do real damage to a utility application claiming priority thereto can do harm. 

For example, if the provisional recites that element X can be A, B, C, D, or E, yet the specification only recites that element X can be A, B, or C, and the claims are written accordingly, then you can't use doctrine of equivalents to argue that D and E should apply. 

[fb]

Thanks for all the advice. I retained someone today to write an NPA and conduct a search. However because of the importance of later foreign filings, and since the UK fellow may destroy that with a  few more forum posts, we filed my information dump as a provisional, to which no reference will ever be made unless the UK fellow publishes, in which case we'll call priority to the provisional and thus make the most of the "claims" therein.

The counsel agreed that if no reference is ever made to the provisional (and hopefully none will be needed if the search and NPA go fast enough), then the NPA will be as if written from scratch (with its own later priority date, of course).

BTW I called one of the attorneys who posts here sometimes, who looked liked a good fit for the task, but this person had no interest in hearing anything from me.

[George White]

and is abandoned ("expired" more accurately, I believe)

Actually, now they do go abandoned at the end of the 12 months (notwithstanding that PAIR does show an "Expired" status for a couple of days - I think it is a mindless PAIR-computer thing since I have seen that status on a Sunday when I still have until Monday and it neither actually expired or abandoned).

"35 U.S.C. 111 Application.( 5) ABANDONMENT.-Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period." 

I think this is specifically to meet the requirement of the Paris Convention for a second filed to be considered a first filed. And this is too complicated.

--George