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[olimits7]

Hi,

I'm currently working on a product idea I have, and I'm trying to fully understand how a "provisional patent application" and "inventor log book" can protect my product idea from other companies trying to patent or sell my product idea.

Based on my research online this is the information I currently have been able to gather regarding this topic:

If I apply for a "provisional patent application (PPA)", after a "public disclosure/sale offer" occurs I have a 1 year grace period to apply for a "non-provisional patent application (NPA)".

However, if I don't apply for an NPA and my PPA expires after the 1 year grace period then this counts as a "bar to patenting" and I will no longer be able to patent my product idea; right??

1. So if the above situation counts as a "bar to patenting" my product idea; I will never be able to patent my idea, and no company or any other person will ever be able to patent my product idea as well, due to "public disclosure/sale offer"??

If this is true, then I guess I can see this as a proand a con. For a pro, at least I know that no one or company could ever try patenting my product idea, but as a con I will also never be able to patent my product idea as well.

2. To avoid the above situation from occurring; can I "public disclose/sale offer" my product idea to a company to see if they want to license my idea without having a PPA or NPA filed, but having a properly kept "inventor log book" instead??

For example, can a properly kept "inventor log book"; which contains detailed information regarding my product idea, signed, dated, and also have a witness sign it be enough for court if a company tries to patent or sell my product idea??

However, after re-reading my question number 2; even if I didn't have a PPA or NPA there is still "public disclosure/sale offer" occurring so this would again only give me a 1 year grace period before a "bar to patenting" occurs; right??

I guess the only difference in my question 2 is that I would save money by not submitting a PPA.

3. If the above is true, then what is my best option to protect my product idea, but at the same time still be able to contact companies to see if they are interested in "licensing" my product without receiving a "bar to patent" after 1 year due to "public disclosure/sale offer"??

Thank you,

olimits7

[JimIvey]

PPAs are one of the most misunderstood and misused things in the history of patents.  Here are a few things to understand.

PPAs are not a prerequisite to a real patent application (RPA or just PA). 

PPAs and RPAs must meet exactly the same legal standard for adequacy -- 35 USC Section 112, paragraph 1.  There is no relaxed standard for adequacy of PPAs.

PPAs do not buy you an extra year after some publication of your invention.  You have that year without the PPA.  See 35 USC Section 102(b). 

If I apply for a "provisional patent application (PPA)", after a "public disclosure/sale offer" occurs I have a 1 year grace period to apply for a "non-provisional patent application (NPA)".

However, if I don't apply for an NPA and my PPA expires after the 1 year grace period then this counts as a "bar to patenting" and I will no longer be able to patent my product idea; right??

You're right, but the answer does not rely on the PPA at all. 

1. So if the above situation counts as a "bar to patenting" my product idea; I will never be able to patent my idea, and no company or any other person will ever be able to patent my product idea as well, due to "public disclosure/sale offer"??

Well, sort of. 

Two things come to mind.  One is whether the other company had already filed an application for the same idea.  The other is whether your publication would be sufficiently public to get before the examiner of the other application. 

2. To avoid the above situation from occurring; can I "public disclose/sale offer" my product idea to a company to see if they want to license my idea without having a PPA or NPA filed, but having a properly kept "inventor log book" instead??

Yes. 

For example, can a properly kept "inventor log book"; which contains detailed information regarding my product idea, signed, dated, and also have a witness sign it be enough for court if a company tries to patent or sell my product idea??

Yes, to the extent that your log book can prove that they didn't invent the invention but rather copied from you.  35 USC 102(f).  If they can show independent invention, your log book won't help.

However, after re-reading my question number 2; even if I didn't have a PPA or NPA there is still "public disclosure/sale offer" occurring so this would again only give me a 1 year grace period before a "bar to patenting" occurs; right??

I guess the only difference in my question 2 is that I would save money by not submitting a PPA.

Yes, I think.  You'd have one year from your earliest publication/offer-to-sell.  You don't restart the clock each time you publish.

And, yes, you'd have the 1 year grace period without the PPA, saving its expense.

3. If the above is true, then what is my best option to protect my product idea, but at the same time still be able to contact companies to see if they are interested in "licensing" my product without receiving a "bar to patent" after 1 year due to "public disclosure/sale offer"??

Really, your only option is to get an application that meets the requirements of law (either PPA or RPA) on file within a year of your first publication/offer-to-sell.

Regards.

[olimits7]

Thank you for your reply...

So it seems that "public disclose/offer to sale" is the most important thing I need to worry about since this starts the 1 year clock, and after this 1 year mark passes I won't be able to submit for a patent ever on this idea due to "public disclosure/offer to sale".  So a PPA isn't necessary as long as I have a properly kept invention logbook that I can prove I was the 1st to come up with the invention; right?

I think my best bet would be to either file a PPA or just keep an accurate invention logbook and contact as many companies as possible within that year after I first "public disclose/offer to sale". If I can't get 1 company interested in my idea within 1 year; then I guess it doesn't make sense to spend $10K on pursuing an NPA; right?

However, I also read that sometimes companies are only interested in patents that are issued.  Even if I file an NPA this doesn't guarantee my patent will get issued, and also it could take up to 2-3 years before the patent does get issued and I don't think companies are that patient...hmmmmm.

Thank you, again!

olimits7

[MYK]

A word of caution -- if all you have is a PPA, and if you go showing it off, some unscrupulous companies will go ahead and start manufacturing anyway, cutting you out entirely, since there's no guarantee you will ever get a patent issued.

I watched one train wreck like that occur;  in that case, the inventor had no money to pursue either a patent or a lawsuit against the "partner" company that not only stole his invention, but also stole the (valuable) prototype sample he had loaned them, and modified the prototype in such a way that it would have been illegal to return it to the inventor.  The "partner" further went around advertising the product by saying that they were fully aware of the patent application, but that they "would" do a design-around so that their great new product would not infringe.

The inventor let the whole thing drop, and the "infringer" still produces and sells the product, and still possesses the prototype (legally, they're the only one who can possess it any longer).

[olimits7]

That's horrible...that a company would go to those extremes to steal an invention that they never even came up with!! 

Sometimes I hate the corporate world, and all the greedy people who make it up!!

olimits7

[JimIvey]

That's horrible...that a company would go to those extremes to steal an invention that they never even came up with!! 

Hard to believe, huh?

That would be like cutting corners on a deep water oil well in the Gulf of Mexico and manipulating MMS to get by legal regulations, or like manipulating energy market to screw California out of billions of dollars, or like encouraging a flood of sub-prime mortgages and repackaging them to sell to institutional investors to make billions of dollars in commissions, or like ... .

You get the idea.

If you ever find yourself swimming in the ocean after a shipwreck between a lifeboat full of lawyers and a lifeboat full of business executives, swim toward the lawyers.

Regards.

[DogDayPM 9er9er9er]

If you ever find yourself swimming in the ocean after a shipwreck between a lifeboat full of lawyers and a lifeboat full of business executives, swim toward the lawyers.

Regards.

If for no other reason than that the sharks won't bother the boat with the lawyers in it ("Professional Courtesy").   

More seriously, keep in mind that for all the criminals you hear about in the news (whether it be corporate, kidnappers, bank robbers, whatever) there are millions of honest folks not doing these things...