Print

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

[jachord]

I have had an Idea for the last seven years but was indigent and could not do anything with it.  I never discussed it with anyone other than my wife.  Now that I am less indigent I wanted to try and do something with my Idea and get it patented.  That's where I hit the snag.  I have already found an attorney and got a cost.  In order to save some cost I decided to do the search myself while I was gathering my finances.  I still planed on having a search done but even that is expensive. 

OK now you have the back ground, now for my problem.  While searching patents for the last two months I could not find any thing in the data base for current patents or applications.  So far I was feeling pretty comfortable.  So the next thing was to search the web for existing products.  After another two weeks of searching I hit my snag.  I found a company based in china that has an office in the states that claims to have device similar to my invention.  Now the real kicker.  They have a patent number listed, but when I try to look up the patent number the database gives me a none found for patents and applications.  The device itself can not be found on the open market so it may not even exist.  I did a patent search under the company name and found a few design patents for a few items but none that match the device in question. 

So my question is should I still apply for a patent?  I have tried to contact the attorney that I was talking to but I can not reach him for some reason now. I guess he wasn't too impressed when I told him that I would have to save up the money.  I have researched the guy and he has done work for some very large companies in my area.  So I don't think he was trying rip me off.

[jachord]

I forgot to mention that the other device was supposedly patented before 2008 (at least that is when they issued the so called press release)  which would mean that any provisional patent would have either expired or they should have applied for a non-provisional.

[Isaac]

They have a patent number listed, but when I try to look up the patent number the database gives me a none found for patents and applications.

What is the first digit of the patent number?

[jachord]

The patent number starts with 12/#######

[Isaac]

The patent number starts with 12/#######

The number is an application serial number for a pending non-provisional application.  If the application has published you can find the application by going to public PAIR and selecting Application number and entering the application serial number.   If the application is not yet published, then you cannot see it.

[jachord]

Is it common for patents to take 4 years or more?

[Isaac]

Is it common for patents to take 4 years or more?

It happens.   For some technologies it happens most of the time.  Did you find out that this one has not yet issued?

[bartmans]

If they are a Chinese company, there is a fair chance that there is a Chinese patent or patent application for the device. You could check Espacent, that contains patent publications from many countries all over the world, if you can find something there (www.espacenet.com).
However, searching in Espacente does not always provide you the desired results, even if the patents are present in the system. It would be better to search for all patents and applications of the company in a commercial database, like PatBase or Derwent/Thomson Innovation. If you have access to Dialog or Orbit/Questel you can do a search in the patent databases there. Otherwise, try to find a professional searcher. A search for a name should not cost you thousands of dollars.

Regards.

[polarbear]

Did the reference you found give enough detail that you could make and use the invention?  If not, it might not enable your invention.

[khazzah]

So the next thing was to search the web for existing products.  I found a company based in china that has an office in the states that claims to have device similar to my invention.  Now the real kicker.  They have a patent number listed, but when I try to look up the patent number the database gives me a none found for patents and applications. 

I forgot to mention that the other device was supposedly patented before 2008 (at least that is when they issued the so called press release)  which would mean that any provisional patent would have either expired or they should have applied for a non-provisional.

So what OP found in the web search was a press release from 2008 which described a device "similar to" your invention. The press release mentioned "patent" and included a number in the form of 12/###,###. As others have noted, this is probably a serial number for a U.S. patent application filed but not yet published.

Question to the board: if OP files an application, might he have a Rule 1.56 Duty to Disclose the press release to the PTO?

[Isaac]

Question to the board: if OP files an application, might he have a Rule 1.56 Duty to Disclose the press release to the PTO?

Not a per se duty, but if the disclosure admits to something patent defeating, there would be a duty to disclose.  A press release that includes the application serial number was necessarily made public after the filing of the application.

[khazzah]

Question to the board: if OP files an application, might he have a Rule 1.56 Duty to Disclose the press release to the PTO?

Not a per se duty, but if the disclosure admits to something patent defeating, there would be a duty to disclose.  A press release that includes the application serial number was necessarily made public after the filing of the application.

Not per se. But OP characterized the press release as "describing a device similar to [his] invention." That's what I was focusing on. As well as the date of the press release -- 2008 -- and OP is talking about filing an application *now*.

Now, the inventor is usually not qualified to determine whether "similar" is close enough to the claimed invention to be "material to patentability." OTOH, most practitioners err on the side of caution with duty to disclose, so I'll bet most folks would disclose the press release.

OTOH, if the press release is similar enough to OP's invention as to be patent defeating, OP should probably think hard about whether or not it's a good idea to even file the patent application.

[Isaac]

Not per se. But OP characterized the press release as "describing a device similar to [his] invention." That's what I was focusing on. As well as the date of the press release -- 2008 -- and OP is talking about filing an application *now*.

You are right of course.

I completely missed the point.  I was thinking about the duty of the other guy to report his own press release.   I think the OP is going to have to report the press release.  Perhaps he should expect to have to point out something distinguishing between his own application and the press release,  and between his own application and the other fellas application assuming it gets published.

And, as you suggest, if the OP cannot distinguish, he should think about why he's even filing.

[ManOfManyBadIdeas]

Maybe I am missing something, but since the press release is from 2008, the priority date must be before that (they already have the application number...). It means that 18 months must have expired, so the application should have been published, unless it's withdrawn. I presume that, given the application number, one should at least be able to inquire whether the application is active or not at the USPTO, whether or not the application itself is available in the online database. Give USPTO a call?

Another thing, can you tell if it's a design or a utility application? If it's a design application you are shooting yourself in the foot a little bit by citing it as relevant to your utility app (I assume yours is a utility app). But you do not have a choice but to report it. If it's a utility app though, you even have a little argument for yourself, saying that the press release is not an enabling description and therefore contains insufficient info to properly evaluate the differences between what's named in the release and your app. The fact that the application related to the press release has been kept secret works in your favor here, since there is no point to have secrecy if the press release has disclosed the invention in an enabling manner.

Make sure you print out the press release and keep it for your records.

EDIT: keep in mind, Chinese company's Chinese patent would make your application useless just as easily as an American patent. So you are more or less stuck having to figure out more about this patent application. I am wondering if patent assignment database would have info even for unpublished patents applications? It's not a given that the original application was filed by that company, they could have gotten the rights from somebody. I am saying this because simple search under the company's name doesn't guarantee the right answer.

[Isaac]

It means that 18 months must have expired, so the application should have been published, unless it's withdrawn.

Most likely that reasoning is correct.  But the PTO is not going to give up any info that you cannot find publicly.  Calling them is a waste of time.

Another thing, can you tell if it's a design or a utility application? If it's a design application you are shooting yourself in the foot a little bit by citing it as relevant to your utility app (I assume yours is a utility app).

Citing something is not an admission that it is relevant.  I think your advice about citing is not the best.  Most likely the application is not secret right now.