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[Designer]

I would like an opinion about this. I am a specialized consultant in my business segment and I developed a graphic product for industrial application.

I commented in very general way the idea with an important scientist researcher of a recognized high-tech multinational company manufacturer of equipments in where this development can be installed. This researcher are very interested.

On the other hand, I have investigated about this and I discovered that it is not possible to patent my graphic product and nor to apply copyrigth. Therefore, If not exist some legal way to protect this product but the company are interested, how I can negotiate with the company? Because in addition this product must be customized for each specific client, is not a generic product.

Perhaps to propose that the company contracts my services like an employee?  Or what advise me? Exist other options to negotiate?

[Smarty Pants]

Regarding:

"Or what advise me? Exist other options to negotiate?"

In my opinion, you are Yoda and should stick to training Jedi.

[DJoshEsq]

You need to contact an attorney, because you will need to disclose the details of the invention so that the attorney can advise you the best way to protect this "invention".  

Please remember that you have only 1 year from the date of disclosure to file a U.S. Patent application.  It sounds like you already lost your foriegn rights!

[Smarty Pants]

Regarding:
"Please remember that you have only 1 year from the date of disclosure to file a U.S. Patent application."

Boy have I battled that one over and over. It seems like every layman that has dabbled briefly in patent education has latched onto the belief that disclosure prevents patentability. Can the person who posted that statement please expound? Can that person point out a relevant U.S. statute? Is there anything in 35 U.S.C. 102 that supports that statement? Is this 35 U.S.C. 102(c) if genuine vigorous development was on-going throughout said 1 year?

Ok, I started out being a Smarty Pants, but now I'd genuinely like to find out if the above statement can be supported. I retract any disrespect toward little green alien martial arts gurus and humbly beg an explanation.

I don't see that the O.P. has asserted that public use, publication, or an offer for sale has occured. Disclosure can occur without such activities. I think the public interprets, to their peril, that the activities listed in 35 U.S.C. 102(b) can be summed up as "disclosure."

Can anybody expound on this?

[Designer]

In my commentary I specified that the graphic product that I developed is not patentable and it is not possible either to be protected with copyrigth, due to its graphic nature and format (mainly the format). But the company are interested.


Nevertheless their applications are very interesting and with a very high potential. Is something that already exists, but I modified it to other new industrial applications.

For that reason I would like an opinion.

[Smarty Pants]

Regarding:
"I am a specialized consultant in my business segment"

You seem at once very head strong and quite out of your business segment when it comes to IP. You have the makings of a difficult client ... you think you already have all the answers.  DJoshEsq probably gave you the best opinion that can be given under the circumstances and without your providing considerably more information, which you should not do on this public message board.

So, other than that you are Yoda and that you should privately contact an attorney, what more opinions do you think you need?

I'm still looking for some support on the statement:
"Please remember that you have only 1 year from the date of disclosure to file a U.S. Patent application."

Anybody out there?

[Isaac]

If you make an unrestriction disclosure of your invention to someone, that disclosure constitutes publication and starts the 102(b) 1 year clock a runnin'.   If you disclose the entire invention, then after 1 year, it is too late to file for a patent.  

You can prevent those kinds of disclosures from becoming publications by using an effective NDA, but if the NDA gets violated, then the violating activity can start the 102(b) clock.

If your disclosure is an attempt to sell the patent widget, then an NDA won't prevent an offer to sell from becoming a 102(b) bar starter.

[Smarty Pants]

All types of disclosures qualify as printed publications under 35 U.S.C. 102(b)?  That's new to me ... but I'll look into it when I have time. On it's face, that sounds false. If you can refer me to support material, I'd appreciate it. In any event, thank you for replying.

I'm under the impression that my describing my invention standing on a street corner is not a 102(b) event ... but someone who hears me may go and trigger or commit a 102(b) event. That someone could go tell a newspaper reporter, the reporter could write a story, the story could be published ... and bingo ... a 102(b) printed publication. But, my describing my invention on a street corner doesn't seem like a printed publication.

[Isaac]

All types of disclosures qualify as printed publications under 35 U.S.C. 102(b)?

I believe you are correct although you do have to be careful about leaving any written materials such as slides or a display laying about even if they aren't distributed.

But, my describing my invention on a street corner doesn't seem like a printed publication.

You're right.  It isn't.   blabbing affects your foreign rights because in most countries the 102(a) like provisions are based on filing dates rather than invention dates, but you are quite right about just talking.

Just don't make offers to sell the invention (rather than rights to the invention).

[patentdude]

Smarty pants has a lot of good stuff to say.  The statements above are nearly unintelligible thus the reason Smartypants cannot properly give an opinion.  But, re the 102(b) stuff, a public disclosure can exist in a variety of ways and there are some very subtle nuances to that public disclosure.  For example, a woman walking around with a new kind of "bustle" under her dress was deemed to be a public disclosure that constituted the 102(b) 1 year date, even though that disclosure was not visible to the public.  In another instance, a guy that invented a new form of roadway was testing it over a year by installing it on a public road.  The guy went out to the road nearly everyday to inspect the wear.  Because he was attempting to reduce the invention to practice, the public disclosure did not trigger the 1 year bar date.  In any case, it is not always as cut and dry as people think.  Even if you disclose your invention, there may be improvements to your invention that occur after the one year bar date that may still be patentable.  Also, you may have to consider the amount of disclosure.  Is that disclosure to some joe schmoe on a street corner a complete disclosure?  If it is, then you are probably screwed, patently speaking of course.  The bottom line is, just use some common sense when you are thinking about disclosure (e.g., would the disclosure do me any good or would it be better to wait until I apply for a patent).  Hope this helps.  Smartypants - keep up the good work!  I especially like the training of Jedi remark.