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[john2006]

Hi everyone,

I would like to ask some questions regarding the "one year rule" as it applies to the patentability of mechanical devices via Utility Patents. Does electronic information count as a "printed publication" ? For example, if an inventor discloses an invention on a website or newsgroup, does this start the one year clock ? I am gusssing that it does, but I wanted to ask to be 100% sure.

Also, is it possilbe to publicly disclose an invention, wait almost one year, then file a provisional patent application, then file a regular patent application almost one year after the filing date of the provisional ? This would actually give an inventor two years after a public disclosure of his / her invention in order to file a regular utility patent application.

I understand that any public disclosure prevents obtaining a foreign patent, & that the one year rule does not apply to foreign patents.  I am only concerned with a U.S. patent.

Thanks for your help.

Sincerely,
John

[Sudhir Kumar]

Dear John,

Yes, publication in any form including electronic publication of the information counts as a "printed publication". But the public disclosure must be  for the reasonalbe working/trial of the invention as well as must be necessary having regard to the nature of the invention.

Yes, you have the time to file a Provisional specification within one year of the public disclosure and the complete specification in relation to the same may be filed within a further period of one year.  

But it is necessary that if any person files a patent application in contrvention of your rights you should immediately file an application for protecting your interests.

No, as far as Indian Patnet Law is concerned we can also rely upon the public disclosure and our bonafides in making the application thereafter if any objection comes at the stage of examination of the same.

Regards,

Sudhir Kumar Aswal

[Bill Richards]

Sudhir says:  After filing a PPA, "the complete specification in relation to the same may be filed within a further period of one year".
Just to clarify, the specification submitted with the PPA must be complete to the extent it discloses and teaches the invention and fully supports the ultimate claims.  It would be wrong to think one can "flesh out" the spec when filing the NPA.  I'm sure that's what Sudhir meant, but I wanted to make sure there was no misunderstanding.  If you will review some of the posts to this Forum regarding PPAs, they are fraught with danger and must be used very carefully.  Some practitioners strongly discourage them.

[Wiscagent]

Bill Richards wrote "… the specification submitted with the PPA must be complete to the extent it discloses and teaches the invention and fully supports the ultimate claims.  It would be wrong to think one can "flesh out" the spec when filing the NPA.”

I don’t completely agree Bill, and here’s why.  It is fairly common for an invention to initially be developed as a single embodiment.  If that first embodiment is fully described, enabled, and the best (in this case ONLY) mode presented that is sufficient for a provisional application for patent.  And that application is sufficient to support at least one (albeit) narrow claim for the single embodiment.

Over the ensuing months the invention is further refined and broadened.  Alternate materials / method / uses are developed.  Less than one year after filing the provisional application, a robust, “fleshed-out,” non-provisional patent application is filed.

I don’t see any disadvantage to having filed the provisional application as described above.  Clearly only narrow claims supported by the provisional application can benefit from the earlier priority date, but isn’t that better than having no claims with an early priority date?

[john2006]

Hi everyone,

Thanks for your replies.

I would like to add a few more questions to this thread to clarify, if I may.

1. If no non-disclosure agreement is signed, can normal development activity such as sending emails of drawings and descriptions to machinist's for prototype RFQ's be considered a public disclosure and start the one year clock ?

2. If you are working with a machinist and the design is developed further during the prototype phase, would the date of the email communications related to the improvements, start the one year clock ?

3. What about sharing the details of a design with someone that can help it's development? Just as a very simple example, lets say you have a design that uses a lever, and you email the details of your design to a company that makes levers, to ask them questions regarding lever technology in relation to your invention. Does this start the one year clock ?  

4. What about web sites that allow you to upload drawing files and descriptions so that machinists can quote the manufacture of the product ? If no non-disclosure agreement is implemented, it seems this must be considered a public disclosure as well ?

Thanks again for your help.

Sincerely,
John  

[Bill Richards]

RE:  Richard's post.
I was referring to a PPA spec that did not properly support claims to the invention that was described in the publication.  I stand by my statement in that regard.

[Bill Richards]

102(b) cites a printed publication.  It must be "published" and that depends upon the facts.  (What constitutes "publication" is a complex question and small changes in the facts can change the outcome.)
So, to address your questions, in general:
1. If no non-disclosure agreement is signed, can normal development activity such as sending emails of drawings and descriptions to machinists for prototype RFQ's be considered a public disclosure and start the one year clock?  How many machinists?  If only one or a few, maybe not, but why not get an NDA?
2. If you are working with a machinist and the design is developed further during the prototype phase, would the date of the email communications related to the improvements, start the one year clock?  See A-1.  Also, why not get an NDA and include IP rights?  What if the machinist becomes an inventor??
3. What about sharing the details of a design with someone that can help its development?  See A-2.  What will you do if the other person becomes an inventor.  If he rises to the level of being an inventor, he will have all the rights to the patent that you do, including the right to license and the right to assign his rights.
4. What about web sites that allow you to upload drawing files and descriptions so that machinists can quote the manufacture of the product?  If no non-disclosure agreement is implemented, it seems this must be considered a public disclosure as well?  If the site is not password-protected and anyone can access it, the answer would most likely be "yes".  (Not a wise thing to do, BTW, since it makes it easy for someone to steal your invention.  And, it can be seen by anyone in the world with internet access.)

[Wiscagent]

Bill -

We concur.  I was pointing out that the invention described in the provisional application may be a subset of the invention described and claimed in the non-provisional application.

[john2006]

Hi everyone,

Thanks for your replies.

Bill Richards had asked the question, why not get an NDA? A non-disclosure agreement is fine, but not everyone wants to sign them.

Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years.

It may be desirable to go ahead and make the improvements public, just to keep anyone else from getting a patent on them. Then, get the new design to market and file an application a year after the date of publication. The inventor may want to do this simply to postpone the expense of filing an application, or just to buy some time to test the new product on the market.

If your not interested in foreign patents, would this not possibly afford more protection and be a better course of action than keeping everything secret and  trying to have everyone sign a NDA ? How often are "inventions" actually stolen anyway ?

I have read that only about  2% of all issuing patents ever become a product that actually sells and makes a profit. Those are extremely bad odds, especially for an independent inventor, and something anyone considering filing a patent application should strongly consider.

The truth is, the majority of independent inventors can't give their inventions away, let alone have someone undertake the time, expense, and risk involved with stealing them. Additionally, most independent inventors don't have the money needed to defend their patent rights even if infringement takes place.

Thanks again for your help.

Sincerely,
John

[Sudhir Kumar]

John,

I agree with Richards that no chances should be taken with an invention and NDA must be signed. As an inventor it is in your interest also and practically it does not harm the perosn signing the NDA being only restricting its disclosure.

I would suggest that if some good years are left then non-obvious improvements and modifications can also be patented as a Patent of Addition and no renewal fees shall be payable fot it anually. Further as it relies on the main invention its prosecution is less burdensome. It is also available to you to patent the new non-obvious  improvements as a an individual patent and get a full 20 years protection.

It is not desirable to make the improvements public, as along with other it will also take away your right to get a patent on them. Publication does not include selling and trail testing the market therefore you wont be eligible for grant after that selling.

It is necessary for both domestic  as well as international market. I dont think by exposing the products to market you would be entitled to keep it secret. Signing NDA is not a big deal and instances of  "inventions" actually stolen are very high, you see there are a number of proceeding for wrongful obtaining, opposition, Revocation etc. in Patent Offices, Courts etc.

Hope it will clear you of all doubts.

Regards,

Sudhir Kumar Aswal

I have read that only about  2% of all issuing patents ever become a product that actually sells and makes a profit. Those are extremely bad odds, especially for an independent inventor, and something anyone considering filing a patent application should strongly consider.  

The truth is, the majority of independent inventors can't give their inventions away, let alone have someone undertake the time, expense, and risk involved with stealing them. Additionally, most independent inventors don't have the money needed to defend their patent rights even if infringement takes place.  

[Bill Richards]

John says:
"Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years."
This is an inconsistent statement.  If the improvements are covered by the claims of the original patent, they cannot be new and non-obvious and, thus, not patentable.  And, if they're covered, then anyone practicing them infringes the original claims.
RE:  "Patent of Addition"  I am uncertain as to what this is.  If, however, it's anything like a U.S. CIP, if there's no pending case upon which to file, then a CIP in the U.S. is not possible.

[john2006]

Hi Everyone,

Bill Richards wrote

"This is an inconsistent statement.  If the improvements are covered by the claims of the original patent, they cannot be new and non-obvious and, thus, not patentable.  And, if they're covered, then anyone practicing them infringes the original claims".

My reply

Bill, it is quite possible to have a patent that discloses a device that would infringe an earlier patent, having broader claims. Just because a device is covered by a broad patent claim, does not mean that is obvious.

In fact, that is exactly why people do infringement searches, even after a patent application is on file and they are ready to go to market. It is possible to get a patent, and not even be able to use the device disclosed in your own patent, because someone else has an earlier patent with broader claims.

The claims have nothing to do with obviousness, it's what is disclosed in the drawings and descriptions, that determines obviousness, along with all other prior art references.

Sincerely,
John

[Bill Richards]

I misunderstood the hypo and John is correct, of course.  The thing to note is that when the original patent expires, only the improvements are protected.  Protection via the original claims does not extend.

[wallflower]

I thought Bill's original response was correct as I understood the hypo.

John first said: "The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years."

John then followed up: "It may be desirable to go ahead and make the improvements public, just to keep anyone else from getting a patent on them. Then, get the new design to market and file an application a year after the date of publication."

If the improvements are covered by the claims of the original patent, then no one will be able to patent the improvements.  Maybe this is a misunderstanding on how claim construction is performed.

[john2006]

Hi everyone,

Wallflower wrote

"If the improvements are covered by the claims of the original patent, then no one will be able to patent the improvements.  Maybe this is a misunderstanding on how claim construction is performed".

My reply

Again, whether or not a device is patentable has nothing to do with the "claims" of prior art patent references, only what is disclosed in the descriptions and drawings of the patent(s), along with all other prior art refernces. Patentability has nothing to do with how the claims of prior art patents are crafted or written.

Someone (a second inventor) could patent the new improvements, if they come up with them independently of the original inventor, and if the improvements have not been published and are not publicy known. Then in 9 years, they would have some time left to market the improvements. Probably waiting 9 years is a discourgement, but when there is say, 3 or 4 years left on the original patent, they may try to patent the improvements. Or, they may wish to wait until the original patent completely expires, you never know.

Either way, it's best for the first inventor of the device in the original patent, to patent the improvements, but if he or she wants to put off the expense of patenting for a year, is it not best to make the improvements public, then file an application a year later ?  

Would there be anything wrong with filing a provisional application one year after publication, in order to further put off the expense of filing a regular appliction ? Then, one year after the date of the provisional, a regular application could be filed. This would actually give the inventor two years after the date of pulication, before filing a regular application. Is this possible ?

sudhiraswal wrote

"It is not desirable to make the improvements public, as along with other it will also take away your right to get a patent on them. Publication does not include selling and trail testing the market therefore you wont be eligible for grant after that selling".    

My reply

In the USA, don't we still have  the right to disclose "and sell" our inventions for one year prior to filing a patent application ? When did this law change ?

Thanks again,
John