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[amuron]

Looks like I had a great idea. Apparently it was good enough that I should have gone ahead and filed a patent application, as an F100 corp was recently awarded a patent on the same concept. 50% of the claims would have been nearly identical. The sad part, is I had the design completed in 98, vs the F100 did not even file their application until mid 2000.

I'm not really upset, simultaneous invention happens all the time. What bothers me, is that the F100 patent has effectively eliminated the possibility of going forward with my invention, unless I can work around those claims. In fairness though,  I lack the marketing capability to go forward with it, so its not that big of a loss in this case.

Otoh, I can see this happening time and time again. Out of my lab notebooks, I have around 480 ideas, with most of them just as ideas, some closer to reality, and a few production ready, and some currently for sale.

I am certainly not in the financial position to go after 17 or more patents, nor are the markets for such inventions large enough imho to justify the cost. (at least at this time)

So my question is how to be proactive. My concern is not how to keep others from taking the idea and running with it, but how to keep an entity from patenting a simultaneous invention, and thus excluding me from pursuing it.

In doing some digging, it appears that statutory invention registration might be a possible avenue. Otoh, at least on the outset, this process looks like it requires a legal professional, and as a result may cost almost as much as a formal application, although as I understand things, one would not have to go through the examination process, thus saving some of the cost.

Yet another avenue would seem to be to get in on the market and have some sales records, thus making the claims of another inventor invalid due to prior art.  Of course,  such an approach would probably have to be resolved in court, especially when the F100 is involved. Then again, perhaps once their attorneys saw the sales records, they might not want to go up against me for infringing on their patent, as the prior art could invalidate some of their claims.

Granted, such an approach is not going to be used for all of my ideas. Where the idea has enough potential, I don't plan on giving away the farm.

What are some thoughts on the way to handle this, such that I don't end up loosing my rights to market my invention when someone else protects it.

Ron

[JimIvey]

Hi Ron,

The short answer is "defensive publication."  You publish your invention in a manner that makes it prior art for any Johnny-come-lately patent applicants for the same invention.  IBM produces it's own technical publication that reads like a collection of unfiled provisional patent applications.

You've already identified one type of defensive publication -- SIRs.  While it looks like they require professional help, they don't -- I'm pretty sure the PTO will publish (as a SIR) just about anything resembling a technical disclosure.  However, they're expensive!  I don't know why.

One of the main advantages of SIRs is that they're in the databases searched by patent examiners -- hopefully saving you the leg-work of proving in validity of an issued patent (by having your work reviewed by an examiner in examining the later patent application).  You may not get this benefit if you simply publish your idea in your own web page, for example.  However, it would qualify as "prior art" just the same.

Another, less expensive, way to get your idea published and in the view of patent examiners would be to file your own non-provisional patent application and allow it to be published.  Assuming you only care about publication, you wouldn't need professional help -- just describe your idea fully (in an enabling manner).  You can simply let the application go abandoned, but the published application will serve as a defensive publication searchable by the PTO.  It will only cost $500 each.  Of course, you can load multiple (preferrably related) innovations into a single application to save money.

There may be other web-based portals of prior art attracting the attention of patent examiners.  If you find one, you can publish there for considerably less cost.

I hope that helps.

Regards,

Jim

[Wiscagent]

IP.com and at least one other company specialize in publishing invention disclosures.  IP.com date stamps the disclosure and periodically sends an electronic copy to the USPTO.  I belive they also publish and distribute a hard copy.

My company uses IP.com for defensive publicaiton purposes.  It cost about $100 to get your disclosure published; definately cheaper than an SIR.

[Isaac]

A SIR has to start out as a non provisional patent application.   The applicant can request during pendency that the application be coverted to a SIR.

I  believe the SIR is examined for compliance with 35 USC 112.   I think the primary good thing about a SIR is that they go into the PTOs database with the patents and published applications.

It is not clear to me that there is any useful advantage of a SIR over a published application.   The patent reform legislation proposes doing away with SIRs.   I  don't think having SIRs examined for compliance with 35 USC 112 is worth the applicant's money or the PTOs resources.