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[bill]

I have received notice that the patent office has received my patent application and has issued me a file date. At what point can I shop it without a Nondisclosure agreement. Most companies big and small wont consider signing one as it ties there hands with current projects pending and or those they deem may be similar?

Would I then be protected to show it to them with a PP only?

[W]

If you filed a non-provisional application, you're in the clear (so to speak). Other problems await you, but if you described any and all aspects of your invention, you can shop it without much to fear. Non-disclosure agreements are always fun, but not particulary necessary right now.

Regards,
-W

[Allan]

Does this advice also apply to a provisional patent??

[bill]

It is a full on utility patent for and automotive tool. Its funny the big boys I spoke with basically have a rider in the materials they send inventors that states. Whatever you send us we will us to the fullest to figure out how to basically get around what you have. I just was trying to figure out if I made some presentations and actually showed the tool face to face am I in the clear. from What you say I am. The other scary part is just about all auto manufacturers have over seas production and I have not Filed the malay of International paper work let alone the expense. Can they then just produce it over seas and then ship back into the US?

By the way thanks for taking the time. this invention stuff sometimes can feel like you are lost at sea!

[Isaac]

You are protected in the sense that your revelations won't
destroy your right to a patent (as long as you don't abandon
your application application.

But you don't have any actual rights to with respect to someone
"borrowing" your idea until your application gets published
and even then your rights with respect to a copier are
limited.

The protection gained by filing is important but not absolute.

[JSonnabend]

I agree with Isaac and think that W may have overstated your position a bit.  As Isaac pointed out, you are protected in the sense that the disclosure of your idea to others will not jeopardize your patent grant.  

Isaac is also correct that you have no protectable rights at this point.  Anyone to whom you shop your idea is free, essentially, to steal it.  Only when your patent eventually issues, assuming it does so, will you be able to stop them, and then only if[/b] your claims actually cover what they are doing.  Also, you will not be able to recover for sales which occurred prior to issuance.

Depending on the nature of the product, sometimes pre-issuance "infringement" should be avoided, and sometimes it is actually welcomed.  I suggest you speak with an IP attorney in confidence in more detail.

- Jeff

[JSonnabend]

Does this advice also apply to a provisional patent??

Allan, there is no such thing as a "provisional patent", only a provisional application.  Because only issued patents, and not applications, give enforceable rights, and because a provisional application never directly matures into a patent,  the preceding discussion is largely inapplicable to provisionals.  The discussion only applies to provisional applications when a formal application claiming priority to the provisional is filed, and then often only in a limited sense.

[bill]

Thanks guys. The opinions and information you have provided is immeasurable. Any further comments and or suggestions would be warmly welcomed.


Cheers,
Bill

[JimIvey]

It seems the issue has been reasonably well covered, but I'll go ahead and toss in my perhaps superfluous thoughts on the matter.

At this stage, you have 2 types of intellectual property protecting your idea: a patent which doesn't exist yet, and a trade secret.  

Everyone here is correct; no patent rights without an issued patent.  How effective your application will be depends on (i) when it was filed and (ii) the substantive sufficiency of your application in protecting your idea.  The former is set.  The latter is impossible to tell from here.  With respect to provisional applications, the latter consideration is where they tend to fall short.  Many people who draft provisional applications seem to do so with the belief that the regular laws with respect to sufficiency of disclosure don't apply -- and that's a mistaken belief.

The important thing to note is that you may still have trade secret protection and that talking to potential licensees/purchasers will most likely cost you that trade secret protection (without NDAs at least).  It may be wise to go that route, but you should understand what you're giving up and why.

The fact of the matter is that there's frequently a gap of protection between giving up your trade secret after filing your application and the issuance of your patent.  You're at risk then.  You have to weigh that against the risk your potential licensees would be exposed to in infringing your future patent.  Part of the equation is the life-span of the product/service you invented.  Products with short life spans could be entirely capitalized and exhausted before your patent ever issues -- think Millenium Bug novelty gifts and, if you were a conscious consumer in the 1970s, the pet rock.  Some products have longer life spans but can be profitably capitalized in the few years your application is pending -- think about products that are easy to manufacture and can be flooded into markets very quickly, like articles of injected molded plastic.  If your product is the type of thing that requires a huge investment that won't likely be recouped before your patent issues, you position is stronger.

If your invention represents a significant competitive advantage among your potential licensees and their competitors, you might be able to coopt the licensee in the effort to protect your idea.  In other words, you can align your licensee's interests with your own vis-a-vis intellectual property.  That would require some exclusivity of the proposed license and possibly an assignment.

I hope that helps.

Regards.

[bill]

Yes, your further comments are clear to me.and yes it is a long term tool. I called around trying to get it co-manufacturered to market it myself via the web and many of the numerous web based tool distributors. My strength is in marketing and the companies is in manufacturing and distribution it seems as if there may be a compromise to work together for an exclusive period of time to launch and then feel it out from there.

My thought then would be to show the physical piece face to face of which they have agreed to a meeting in December. If they like what they see physically, then in hand will be an NDA to further show internal parts and drawings etc.

Do you agree?

Thanks again for the time.

Bill

[JSonnabend]

Some products have longer life spans but can be profitably capitalized in the few years your application is pending -- think about products that are easy to manufacture and can be flooded into markets very quickly, like articles of injected molded plastic.

Jim's advice is very similar to the advice I give my clients.  One more pair of pennies' worth of thought: if the product is as Jim mentioned in the above quote, sometimes it's not a bad thing that competitors flood the market before your patent issues.  If the invention truly has legs (that is, there will be demand for years to come), then your competitors may be very keen to take a license to your patent the day it issues, so to speak, rather than fight you.  Sometimes, there is enough money to go around.

Just another thought.

- Jeff

[Bill Daker]

I just wanted to give all who shared their advise some feed back from my meeting with the manufaturer/distributor. I think it went extremely well based on a couple fronts. One I believe it is best to present the invention patent pending stage as to keep the i.e. company on their toes and prevent them from immediately picking it apart to reinvent the wheel before commencement of such a relationship. Two this particular company is a small to medium size manufacturer which gives us the chance to get into the game/industry and grow with a company that won't totally swallow us up and spit us out. The down side of this is they will sell it on the low side of the price scale which will give us less based on the percentages of sales. However they do not want an exclusive and will produce it and package it in less than three months which I believe is amazing. Also dealing direct with the president of a small to medium sized manufacturer is much more direct than going threw a BOD via standard chain of commad process in bigger companies.
Anyway thanks to all who shared in there assistance. Heres to a great new year!