The Intellectual Property Forum

Thanks everyone!

I just have this idea that I can't let go. It's not like I copied the idea. They just filed their application before I did. Coincidentally, the day I was ready to file - their patent went public.

Because the designs are completely different, but serve the same utility function - is there anything I can do?

Say someone patent a cup (defined as a cup with a "Cutout" hole), can someone else patent a cup fabricated differently using panels with semi circles - when fused together make up a hole in the middle? They serve the same function which is to drink water etc., but are fabricated differently. As it would state in the claims of the current patent fabricated by means of a "Cutout" hole - oppose to the subsequent patent with a claim fabricated by means of using "Panels with Semi-Circles" which are fused together to form a hole in the middle.

There has to be a way that I can still patent my idea.

I already made, finished formal illustrations, and even took photos of the idea before their patent went public and I have paper trail to prove I did. I truly worked extremely hard on this idea which I believed didn't exist at the time.

I just want to be 100% sure before I dissolve or go forth with this idea.

Best,

Just as a main point, a patent doesn't give you a right to practice your idea.  So "going forth" with practicing your idea is an entirely  different undertaking then "going forth" with seeking a patent.  Thus, even if you get a patent for your concept, you may still be excluded from practicing it.

Let's agree to disagree.

Your statement that just because a good provisional requires the same effort as a non provisional, why bother with it at all; is a very short sighted statement in my opinion. Here are a few real world practical reasons why this isn't always the best strategy.

1) Since most patents that do generate licensing revenue, generally generate most of their revenue towards the end of their life (specially true in biotech), not filling a provisional could take away that extra year a business gets to commercialize the idea.

2) In a significant number of instances I have found that the inventor has defined a system but is yet adding fidelity to various component designs and functionality. Multiple provionals within the first year from which multiple non provisionals can take priority is almost always my recommended course of action.

I believe one misses the forest for the trees if one does not realize that a provisional can afford a business an extra year to set things up commercially to either license the technology or make a patented product. Patents are a tool for providing an exclusive revenue generating time period and a practitioner does great dis-service by not being cognizant of the business implications of these choices.

Yes, I will agree to disagree.  The first point of which is that I have never said provisionals dont' serve a purpose.  Moreover, not 1 previous post ago, I expresslyl stated, "I don't have a problem filing provisionls."  I"m not sure how that could be misunderstood?  In any case, however, I have met too many inventors/applicants who failed to understand the purpose.

While skimming through recent Fed Cir decisions that review BPAI decisions, I ran across something that fits right in to our recent discussion on Predictable Results rationale (that discussion starts here http://www.intelproplaw.com/ip_forum/index.php/topic,14971.msg77799.html#msg77799)

In re Schwemberger (http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1127.pdf) affirmed a BPAI decision, which in turn affirmed a 103 rejection. I didn't spend too long on the Fed Cir opinion. The more interesting part, to me, was the BPAI's Decision on Rehearing (http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009001229-09-18-2009-2).

Interesting because it provides an in depth analysis of the Predictable Results rationale that we just discussed. Specifically, it explains how each element of the Predictable Results rationale (ie, "known technique", "ready for improvement", "predictable results") is applied to the facts of the case.

The one thing I haven't figured out yet is whether or not the rationale requires a POSITA to recognize a benefit of the predictable results. There is talk of a benefit, but that's described as an "additional apparent reason to combine".

Excellent - thank you for the thread.  I am not a big fan of the "it would be obvious to combine because of predictable results" company line [paraphrasing].  I imagine the cost of 'KSR' in legal fees to clients is.... well, I can't even guess.  I have noticed, or at least perceived, in the last 6-12 mos, be it PTO guidelinds or CAFC decisions, the pendulum start to come back.  I digress...

Quote from: OMG IP on 11-03-10 at 11:07 am

Go  to  court to invalidate based on fraudulent invetorship.

Invalidate what?  Unless the copyist is filing a patent in his own name, he does not need to make any claims of inventorship in order to sell product.     

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It's not an overstatement; it's a philosophy.  Great - you draft a proper provisional application in terms of 112.  Now what?  My guess is you would have it converted to a non-provisional with proper format.  How is that saving $$ exactly?

In some cases, the inventor may have documentation on hand that describes the invention in enough detail to serve as a provisional, perhaps with some additional prose written by a patent attorney.  In that case a provisional could be much cheaper than a non-provisional, particularly if there is some chance that costs for the non-provisional won't come out of the inventor's pocket.   While I agree that this is not the situation for most inventors, I've seen cases where sophisticated inventors have journal articles ready for publication that fully flesh out the details of their inventions.

In the present case, it seems that the inventor is keeping some fairly detailed online documentation.  I haven't see his web page, but is it beyond the pale that the inventor might already have the bulk of the content for a provisional on hand?

I went back and re-read my post... I skipped several finer points without filling in the blanks.  So your reading of what I wrote is not off.  If I took time to clarify, we would most likely be on the same page, at least from a semantics stand point. No worries.

Quote from: OMG IP on 11-03-10 at 04:59 am

"technically" someone cannot take your idea and claim it as their own.  Do you think that would stop MegaCorp from doing so?  Are you prepared to go to court to prove it?

Going to court would serve no purpose if the idea is not protected by patent.  Being first to invent does not give you any right to prevent others from copying your invention once it becomes public.  At best being first may allow you to invalidate someone else's patent.

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If you think your idea is worth an investment, get a patent.  Jim is right - do not seek a provisional.  If a provisional is done correctly/properly, it will resemble a non-provisional, and you're not saving anything.

This a bit of an overstatement.  The content of the provisional must support the claims fully under 35 USC 112 in exactly the same way/extent as does the detailed description of a non-provisional application, but a provisional need not resemble a non-provisional in form.   The problem often made with provisionals is skimping on the content, but provisionals are never examined for formalities even when used as priority documents.
     

Go  to  court to invalidate based on fraudulent invetorship.

It's not an overstatement; it's a philosophy.  Great - you draft a proper provisional application in terms of 112.  Now what?  My guess is you would have it converted to a non-provisional with proper format.  How is that saving $$ exactly?

"technically" someone cannot take your idea and claim it as their own.  Do you think that would stop MegaCorp from doing so?  Are you prepared to go to court to prove it?

If you think your idea is worth an investment, get a patent.  Jim is right - do not seek a provisional.  If a provisional is done correctly/properly, it will resemble a non-provisional, and you're not saving anything.

On a sort of related topic as to the OP, a colleague and I have recently and continuously agreed that patent drafting should be much, much more front-end loaded than is the typical norm.  IOW, better disclosures, better searches, better claims, and better supporting specifications.  While the "name of the game is the claim", that refers to ISSUED claims, and you can't have good issued claims without the aforementioned items.

What good is a "cheap" patent when it is likely narrow, unenforcable, and suspect under re-exam.