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Author Topic: Next Step Help please?  (Read 1024 times)

stickyagent1

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Next Step Help please?
« on: 02-16-17 at 09:47 am »

Hi
I have 2 inventions of a mechanical nature and am now at the prototype stage.
I am certain there is no products like mine available on the market at present but that’s not to say there is no filed applications in the process so I understand some formal searches will need to be conducted asap before approaching investors ect.

I am confident i have described the core elements of my inventions and the functioning mechanisms and what they perform in relation to ‘my provisional claims’ in sufficient detail, although I do not wish to establish the final claims in my application.
I have essentially described everything I can in regards to the stage I’m at, further descriptions can only be based upon the next stage but after I have some form of protection i.e ‘patent pending’

My process in thought is essentially file all 1st  or provisional patent applications both in the us and uk myself, then launch a small marketing campaign to hopefully gather some interest, then to collaborate with those necessary to grow the product in far as aesthetic design and also confirm the specification of such mechanical parts such as battery voltage, motor rpm and torque ect.Then within the required time frames and upon final development to file the final patent applications using a patent attorney to file with claims, which obviously could have varied throughout the finishing development stages.

I would be most grateful on any feedback/advice/tips on my thought process and also any pointers of things to be aware of filing a us provisional application online from the uk.

Many Thanks
Ricky
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memekit

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Re: Next Step Help please?
« Reply #1 on: 04-18-18 at 03:17 pm »

I'm a US pro se, but from what I've experienced, that no matter how in-depth I do my own search, the USPTO has far better search engines which can and do find things that a lay person cannot.  In fact one prior art patent from Japan that my Examiner found but I did not, will not come up for me even if I put in the patent author and title or content.  It only comes up with one link if I put in the original patent number.  So there was no way that I could have possibly found this particular prior art.  This happens to some frequency such that my Examiner said to me that I can go ahead and do my searches and work from that point but my impression is that USPTO is going to ignore them and run their own.
So you may want to do your provisional applications, then file a patent application pro se on your own which is not so difficult, pay for that to the patent offices, then they will run their prior art searches when they start prosecution.  It is then that you will know if you're in the clear, or if you have major conflicts you will know whether to abandon it or hire a patent attorney.  Of course you can just hire a patent attorney to run the in-depth search ahead of time too, but you should compare the costs of the two directions. 
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bartmans

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Re: Next Step Help please?
« Reply #2 on: Yesterday at 05:33 am »

Although I appreciate the effort that people take to write and file a (provisional) patent application themselves, you should realize that it is not only the drafting of the claims for which you would need a qualified patent attorney/patent agent. In your case it seems to be more important to make certain that your provisional application can serve as a source for a valid claim to priority. This is especially important because you mentioned to go public with your invention after filing the provisional. The danger of that is that - if it would appear that na valid claim to priority can be made - this publication of your invention can destroy the novelty of your later application in many countries in the world, including the UK.

Secondly, I agree with memkit that the patent office can do a better search job than many inventors. For that reason, I would advice to file the provisional with the UK patent office, add some claims that you would think describe the invention in the broadest sense and then let them do a search. This is still relatively cheap and you will definitively have the search results within the first year, i.e. before you have to file the definitive (non-provisional) application.
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