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[Retarius]

I have a US-based client who is having me write a Provisional application for an invention, and get it filed.  I know that 12 months from the Provision filing date, I could file a PCT application (or foreign national applications), and claim priority from the Provisional.

During the intervening 12 months, the client plans to conduct discussions in private and under NDA with selected potential customers. No public disclosure, trade shows, publications, etc.  He wants to know if the NDA discussions will jeopardize either US, PCT, or foreign national filing? Does it matter if the "discussions" include an offer for sale/licensing (after a patent issues) of the claimed invention? I'm a bit rusty on foreign/PCT and just wanted some recent confirmation. 

Thanks,
Retarius

[JimIvey]

No public disclosure, trade shows, publications, etc.  He wants to know if the NDA discussions will jeopardize either US, PCT, or foreign national filing? Does it matter if the "discussions" include an offer for sale/licensing (after a patent issues) of the claimed invention? I'm a bit rusty on foreign/PCT and just wanted some recent confirmation. 

The US shouldn't be affected because you have the one-year grace period under 102(b).

The PCT doesn't matter because they don't issue patents.

As for the rest, each jurisdiction has its own patent laws and you'd have to consult the law of each jurisdiction in which your client would like patent rights.

As far as I know, the "offer for sale" is unique to the US (actual sales required elsewhere), but I'd certainly confirm that for each and every jurisdiction you care about.

One thing to be mindful of is the "reverse (offer for) sale" -- getting a quote from a manufacturer.  If you ask for a quote from a manufacturer, that can be an offer for sale.  If you actually sign a contract for manufacture under NDA prior filing in the PCT or elsewhere, that could be construed as an actual sale in some place that you care about.  Actually paying for the manufacture of the thing is even more likely to be considered an actual sale.

Regards.

[Retarius]

Many thanks Jim - and for the reminder that the PCT doesn't make patenting decisions on anything. I'll check with foreign counsel for the jurisdictions my client cares about.

Retarius

[UVAgal4]

Well, if it claims priority of the US Provisional, and nothing happened publicly before the filing of the US Provisional, it shouldn't be a problem. (at least in EUrope)

[Yak]

Assuming the provisional will fully support the eventual national filings (US and otherwise), and I realize that in most cases that this assumption is faulty; won't the first filing of the provisional being before any type of public disclosure save the invention even if foreign jurisdictions which have an absolute novelty requirement?

Jim, I am unaware of reverse offer for sale idea you mentioned.  Do you have any references you could share so I can read up on this? 

I was under the impression that for the first sale or offer for sale clock to begin, the inventor had to be selling the actual invention or offering for sale the invention, once it is in condition to be made.  Also that offering to sell or license the patent for an invention was not considered an offer for sale of the invention (at least in the US).  Is this understanding incorrect?

[JimIvey]

Jim, I am unaware of reverse offer for sale idea you mentioned.  Do you have any references you could share so I can read up on this? 

I was under the impression that for the first sale or offer for sale clock to begin, the inventor had to be selling the actual invention or offering for sale the invention, once it is in condition to be made.  Also that offering to sell or license the patent for an invention was not considered an offer for sale of the invention (at least in the US).  Is this understanding incorrect?

Let me take a stab at the latter part first. 

The offer to sell can be by anyone, not just the inventor/assignee.  Offering to license the patent is not the same as offering to selling the invention.

The test for whether the offer is to sell the invention rather than some vague idea isn't whether the invention is "in a condition to be made."  The test is whether the technology is "ready for patenting."  As an example, if I offer to sell a spinning wheel that spins cotton into gold, but I have no idea how I'll get it to work, it's not ready for patenting and my offer doesn't count in 102(b).  On the other hand, if I know enough about the technology that I could write an enabling written description of the invention, my offer counts under 102(b).

I don't have a cite for that, but it's older law (5-10 years old, I think) repeated in a fairly recent Federal Circuit case -- in the last year or so, I believe.

As for the reverse offer to sell, I was surprised, too, the first time a poster here mentioned it.  It's probably been at least a year or two, and many older posts seem to be gone after the recent database repair here.  Hopefully, they'll see this and re-post the case(s).  I vaguely recall something about that in the MPEP -- something small, perhaps just a parenthetical after a case citation.  I did a quick search of the forums and didn't find anything.

For what it's worth, the apparent harshness of such a rule is eased a bit by the fact that it just starts a one-year deadline.  I don't believe the same rule (or even mere offers to sell) applies in most absolute novelty jurisdictions.

Regards.

P.S.  I did a quick search and only found a citation that the offer to sell need not be from the inventor or assignee.  In re Caveney, 761 F. 2d 671 - Court of Appeals, Federal Circuit 1985

[Yak]

Ok, so just to make sure I am straight here:
1) An offer for sale or the sale of  any future rights to the patent (license or assignment) is not considered 102(b) "on sale" triggering the 1 year clock.
2) For "on sale" to begin for an offer or sale of an invention, it must be "ready for patenting".  But offerer must still be selling the invention not the rights to it?
3) Even if the actions of the inventor by selling the rights to the invention doesn't begin the 102(b) clock, an action by an offeree can begin the 102(b) clock by offering to sell the invention to a 3rd party?

[khazzah]

As for the reverse offer to sell, I was surprised, too, the first time a poster here mentioned it.  I

Jim, are you talking about the Oddzon case?
http://scholar.google.com/scholar_case?case=11315691784387127617&q=122+F.3d+1396&hl=en&as_sdt=80003

[Isaac]

3) Even if the actions of the inventor by selling the rights to the invention doesn't begin the 102(b) clock, an action by an offeree can begin the 102(b) clock by offering to sell the invention to a 3rd party?

An offer to sell to *any* party can star the 102(b) clock.

[Yak]

3) Even if the actions of the inventor by selling the rights to the invention doesn't begin the 102(b) clock, an action by an offeree can begin the 102(b) clock by offering to sell the invention to a 3rd party?

An offer to sell to *any* party can star the 102(b) clock.

Roger, here "3rd" was intended to mean the improper "any ambiguous other" than the "1st" and "2nd"....

[JimIvey]

Jim, are you talking about the Oddzon case?
http://scholar.google.com/scholar_case?case=11315691784387127617&q=122+F.3d+1396&hl=en&as_sdt=80003

It doesn't look familiar, but the ruling in that case is insane.  I can't get a claim that is obvious in view of something that I didn't invent (and that isn't documented anywhere in prior art).  Whatever....

Regards.

[JimIvey]

3) Even if the actions of the inventor by selling the rights to the invention doesn't begin the 102(b) clock, an action by an offeree can begin the 102(b) clock by offering to sell the invention to a 3rd party?

An offer to sell to *any* party can star the 102(b) clock.

And, of course, the offer to sell can be make by any party to start the 102(b) clock.

Perhaps Yak meant "offeror" rather than "offeree".

Reminds me of my dorky joke in law school when Yanni was popular (relatively):  "That would make me the 'yawnor.'"

Regards.

[Yak]

3) Even if the actions of the inventor by selling the rights to the invention doesn't begin the 102(b) clock, an action by an offeree can begin the 102(b) clock by offering to sell the invention to a 3rd party?

Perhaps Yak meant "offeror" rather than "offeree".

Regards.

Yup, attention to detail will get you every time.  Just noticed that I was about to file an application with two claim 13's.  It's all in the details.

[Dazed-n-confused]

Yup, attention to detail will get you every time.  Just noticed that I was about to file an application with two claim 13's.  It's all in the details.

Strange.  I thought "offeree" was correct.  The question being, inventor offers rights in the invention to an offeree, then that particular offeree himself tries to sell the invention itself to some 3d party.  No?

I filed an app with 2 claims numbered 26 in it.  In my amendment I had to explain that I wanted to "cancel second iteration of claim 26, leaving first iteration of claim 26 present in the case, and submitting new claim 31 which is identical to originally-filed second iteration of claim 26..." etc.  How embarrased I was.

[JimIvey]

... inventor offers rights in the invention to an offeree, then that particular offeree himself tries to sell the invention itself to some 3d party.  No?

Yes, that starts the one-year time period of 102(b). 

So does an offer to sell the invention by someone who independently came up with the same thing and did not learn of the invention from the inventor.

The offer to sell does not have to somehow originate from the inventor.

Regards.