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[UVAgal4]

I was recently contacted by a family member, who has been working on and off on his invention for over 10 years (lack of funds, disinterest, etc.) He tells me he is finally ready to patent it. He would like to do it himself, but I told him I was willing to help as much as I could.
He started to go into the specifics of his activities over the past ten years, and all I could think was "This is like one of those awful Registration Exam questions with dates and disclosures all over the place."

Doug Inventor invents a doodad late 90's.
2000 - initial inquiry and disclosure to a first company
2000 - sends in a document to the USPTO under the Disclosure Documents Program outlining his basic concept.
2001 - has first prototype made
2002 - has second prototype made
2007 - decides he doesn't want patent protection as it is too costly, and contacted 4 companies about his idea
March 2011- files provisional application with the USPTO

Please keep in mind that almost all of this was without non-disclosure agreements.
He has not published anything in technical journals, online, etc.
What do you advise Doug Inventor?

a) give up now and save your money for a nice car
b) hire a patent attorney specialized in "getting stupid independent inventors out of prior disclosure traps" and be ready to pay through the nose
c) try to sell idea to a large company and let them deal with the fallout
d) other

All d) other suggestions welcome!  I don't know WTF to tell him.
Thanks.

[bleedingpen]

Tell him to invent a time machine and go back in time to rectify his disclosure problems


 

[UVAgal4]

Maybe that is the doodad...

[bleedingpen]

If his time machine is big enough for two people, you should join him on the journey and then tell all of us patent attorneys about it.

Also, send pics.

[khazzah]

He started to go into the specifics of his activities over the past ten years, and all I could think was "This is like one of those awful Registration Exam questions with dates and disclosures all over the place."
...
Please keep in mind that almost all of this was without non-disclosure agreements. He has not published anything in technical journals, online, etc.
What do you advise Doug Inventor?

You didn't make this explicit, but your real question seems to be "do any of the inventor's activities constitute a 102(b) bar to patentability?"

Right?

[UVAgal4]

Yes re. 102b.
I guess the document disclosure in 2000 with the USPTO doesn't count as publicly known, from what i can gather from the website.
I guess concerning the disclosures to the companies an "implicit confidentiality agreement" would have to be argued? That as it was for talks concerning fabrication/commercializing, that an implicit confidentiality can be assumed?

And to bleedingpen..
I guess if it was a time machine he wouldn't have so much trouble finding a company willing to invest... Shame.

[JimIvey]

The first thing I'd ask is whether he asked the company to keep his idea secret in 2000.  Oral NDAs are enforceable and would probably be enough to avoid 102(b) if he had handed them any documents.

Of course, that's the second question: did he give them any written materials?  102(b) speaks to "printed publications" and "public use".  Use in private within the company is probably not "public", and you need something tangible and persistent to be a "printed publication."

There was a big case against MSFT (Eolas, I believe) in which the inventor gave a demo of the invention without NDA to someone else (2 engineers at Sun Microsystems if I recall correctly) more than one year prior to filing.  It was not a 102(b) bar.  I think reading the facts and discussion in that case would be helpful.

I would suggest looking over the provisional application and ignoring its filing altogether unless it looks like it supports viable claims as well as a real application does -- i.e., follow up with a real application prior to any new marketing activity.

Lastly, and perhaps most importantly, I'd have a discussion about the realities of patents.  They are valuable property for businesses and, accordingly, are expensive.  After filing, Mr. Inventor has to be ready to counter all the rejections he may face -- though I just got my first first-action allowance since before Dudas.  If money is really, really tight, just explaining the issue fee and maintenance fees might scare him off.  I had one client express shock that granting a petition to make special for inventor's poor health is not the same as a granting of the patent -- they had a hard time believing they still had to go through examination.

Even with all that, a patent does no more than convey legal rights.  Legal rights mean nothing unless he has the muscle (in his wallet) to go to court and convince the court to enforce his legal rights.

I would try to convey that, despite all the hurdles, patents can have some value, but he really must fully understand what it can take to get a patent and understand that patents don't guarantee income.  I often say that the only patent without risk is an expired patent.  He has to understand the costs and the risks before deciding to move forward.

Regards.

[rts]

Here's the quick and dirty version:

Doug Inventor invents a doodad late 90's.
2000 - initial inquiry and disclosure to a first company [assume first company disclosed/made+sold/published - prior art A]
2000 - sends in a document to the USPTO under the Disclosure Documents Program outlining his basic concept.
[okay, nothing to see here]
2001 - has first prototype made [assume it left his garage - prior art B]
2002 - has second prototype made [assume it left his garage - prior art C]
2007 - decides he doesn't want patent protection as it is too costly, and contacted 4 companies about his idea [assume at least one of these companies disclosed/made+sold/published - prior art D]
March 2011- files provisional application with the USPTO [finally! invention E]

Even if he had NDAs, there's no guarantee the companies respected them. Assume the worst.

So, if E minus D minus C minus B minus A (i.e., improvements in the last 4 years) is worth something, then formalize the patent app before Mar 2012. He's also gonna have to disclose A, B, C, and D to the PTO. Have fun.

That's what I'd do. YMMV.

[khazzah]

He's also gonna have to disclose A, B, C, and D to the PTO. Have fun.

Disagree that events A, B, C, and D must be disclosed to the PTO. So far we have no facts that suggest actual public use. Instead, all we know is that we don't know whether or not the invention was used in public.

That said, many practitioners would decide to play it safe and disclose those events.

[JimIvey]

Assume the worst.

I'll just respectfully disagree that such is our job.  We don't really help anyone by presupposing prior art that isn't known to really be prior art.

If your goal is to convince the probably worrisome client to move on to the next practitioner, there are better ways to do that.  The one that seems to work best is deciding that there's an unresolvable conflict of interest, even if there isn't.

Regards.

[bleedingpen]

Assume the worst.

I'll just respectfully disagree that such is our job.  We don't really help anyone by presupposing prior art that isn't known to really be prior art.

If your goal is to convince the probably worrisome client to move on to the next practitioner, there are better ways to do that.  The one that seems to work best is deciding that there's an unresolvable conflict of interest, even if there isn't.

Regards.

Usually our unresolvable conflict of interest involves around not being able to locate an inventor named Lata Green. 

[rts]

Disagree that events A, B, C, and D must be disclosed to the PTO. So far we have no facts that suggest actual public use. Instead, all we know is that we don't know whether or not the invention was used in public.

That said, many practitioners would decide to play itself and disclose those events.

He contacted 5 to 7 (depending on who made the prototypes) companies. I would bet one of them spilled the beans to some degree. It's better to assume they all did at this stage than to find out post-issuance. You could ask them, but they might lie, especially if they've filed their own patent app on the idea. I agree with you in principle, though.

Plus, if any of the company peeps told him (a) it's been done before, (b) it'll never work and I'm an expert, or (c) we sold something like that 10 years ago and it sucked, then that triggers a particularly nasty version of the Rule 56 duty as well.

I'll just respectfully disagree that such is our job.  We don't really help anyone by presupposing prior art that isn't known to really be prior art.

Well, if we assume none of it is prior art, then we may face rejections on previous disclosures or publicly available derivative work by others. That'll cost him $. If we assume all of it is prior art, then he may get a relatively narrow claim issued. In the former scenario, you end up implicitly over-promising and the client becomes increasingly unhappy with the lack of progress to issuance. In the latter scenario, costs are low, issuance is faster, and his most recent embodiment is protected.

Shooting for the perfect broad claim is not going to satisfy a client like this. Plus, he may not be telling you the whole story regarding past disclosure, especially as these ones are so old. Memory fades.

If any of the previous embodiments were commercially viable, then one of these 5-7 companies would be selling it by now, and then it would almost certainly be prior art under 102(b).

If he doesn't like it, he can find someone else. He's not going to like paying for all the research his 11 years of procrastination caused. He's going to be very difficult to make happy, unless he agrees that E-D-C-B-A is good enough.

There are too many known unknowns and most of them are unknowable under a limited budget.

"There are known knowns; there are things we know we know. We also know there are known unknowns; that is to say we know there are some things we do not know. But there are also unknown unknowns – the ones we don't know we don't know." - Donald Rumsfeld

[JimIvey]

Well, if we assume none of it is prior art, then we may face rejections on previous disclosures or publicly available derivative work by others.

Why do you assume anything?  The guy is right there, ready to answer questions.  As far as I can tell from the OP, Mr. Inventor is fluent in English and is mentally competent and therefore probably has some recollection of further details of some or all of the relevant events as far back as 2000.

More importantly, the weighing of costs vs. benefits (discounted by risk) is a business decision, not a decision for a patent practitioner.  It's not our place to say what's worthwhile and what's not.  Our place is to plug as much information as we can into the cost vs. benefits analysis and to let the business people determine whether the value of the innovation in the marketplace is adequate to justify the risks.

In a case like this, you simply explain that this or that event might be prior art that you can't avoid.  I typically explain the factors that go into the risk (see the Eolas case I mentioned above) and try to help the client increase accuracy of the estimated risk.  I try to give a shooting from the hip estimate of the likelihood of this or that happening.  Perhaps after you learn details of the demo in 2000 and read Eolas, you might have a gut feel that the demo is 30% likely to be considered unavoidable prior art.  You tell the client that, and explain that information of the demo will have to be disclosed to the PTO and that you'll try to spin the event based on the facts of Eolas.  Whether that eviscerates the entire value of filing the application is entirely a business decision.

Regards.

[UVAgal4]

Thanks everyone for your replies.
From what I have been able to eek out of the inventor so far, the companies all said they weren't interested and had their own R&D departments, so they didn't want to get into talks with independents. As far as inventor knows, none of the companies he contacted has come out with anything similar since their talks.
And he did give them his write-up, conceptual photos, and showed them the prototype.
Sigh.

[khazzah]

More importantly, the weighing of costs vs. benefits (discounted by risk) is a business decision, not a decision for a patent practitioner. 

Amen to that! When clients ask me whether or not they should pursue/keep pursuing a patent application, that's exactly what I tell them: I'll give you information to allow you to make an informed decision, but the decision is yours.