Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: Public use after provisional patent is issued?  (Read 2075 times)

mikepro1

  • Junior Member
  • **
  • Posts: 48
    • View Profile
Public use after provisional patent is issued?
« on: 01-05-18 at 01:31 am »

Is public use of an invention allowed after a provisional application has been filed and a patent pending notification issued?

Thank you for your help
Logged

mikepro1

  • Junior Member
  • **
  • Posts: 48
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #1 on: 01-05-18 at 01:50 am »

Also, in its simplest form, please explain what protection filing a provisional patent and having a patent pending provides to an invention.

Thank you 
Logged

Tobmapsatonmi

  • Lead Member
  • *****
  • Posts: 997
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #2 on: 01-05-18 at 03:08 pm »

It's not really a question of what you are "allowed" to do. You can show your invention off any time you want - there just may be downstream consequences you'd rather avoid.

But yes, assuming the provisional application describes your invention in a manner that will fully support your eventual utility patent application for the invention, there should be no harm in thereafter making public display or use of the invention.

As for what the provisional application gets you - really nothing in itself.  It is a 1-year placeholder that you can claim priority back to if you want to file a US utility patent and/or any international applications.  If you don't file the US utility and/or international apps claiming the priority date of the provisional application, it simply expires as if it had not existed.
Logged
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

smgsmc

  • Lead Member
  • *****
  • Posts: 2494
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #3 on: 01-05-18 at 07:38 pm »

But yes, assuming the provisional application describes your invention in a manner that will fully support your eventual utility patent application for the invention, there should be no harm in thereafter making public display or use of the invention.

<<Emphasis added>>

This is a critical point.  The vast majority of provisional patent applications (especially written by inventors) are sheer garbage, and this assumption probably would not hold up under close scrutiny if someone were to challenge the validity of the priority date.

To OP:  Not sure whether you're just typing in a rush.  But I want to emphasize that there's no such thing as an issued provisional patent, only a provisional <patent application>, which Tob has explained.
« Last Edit: 01-05-18 at 07:44 pm by smgsmc »
Logged

mikepro1

  • Junior Member
  • **
  • Posts: 48
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #4 on: 01-10-18 at 10:59 pm »

Thank you for your post.

I had an attorney complete and file the PPA but just as an fyi to me what are some examples of this missing from the PPA that would make it garbage?  Size, color, materials, etc?
Logged

mikepro1

  • Junior Member
  • **
  • Posts: 48
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #5 on: 01-18-18 at 12:45 am »

Any help on the question in the previous post?  Thanks
Logged

MYK

  • Lead Member
  • *****
  • Posts: 4211
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #6 on: 01-18-18 at 03:42 am »

There's no generic answer;  those three things depend almost entirely on the invention.  Size is normally not a consideration -- a six inch wrench is the same as a four inch wrench to the PTO -- but if you're doing something in MEMS then size might be very important.  Materials aren't important unless they're important.  Color, I'm having a hard time thinking of a situation outside of a design patent where it might be important, but who knows?
Logged
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

smgsmc

  • Lead Member
  • *****
  • Posts: 2494
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #7 on: 01-18-18 at 07:18 pm »

Thank you for your post.

I had an attorney complete and file the PPA but just as an fyi to me what are some examples of this missing from the PPA that would make it garbage?  Size, color, materials, etc?
The general requirement is that the provisional patent application must have sufficient detail to enable a hypothetical person having ordinary skill in the art to implement the invention claimed in a nonprovisional application (of some flavor that claims the benefit of priority of the provisional patent application) that ultimately issues.  The level of detail that needs to be disclosed is highly case specific.

Way too many provisional patent applications are sketchy outlines missing the requisite detail.  Many inventors are under the mistaken notion that the requisite detail is not needed in the provisional, and can simply be added in the nonprovisional.  This is more of an issue when inventors file their own provisionals because they can't afford a patent practitioner (attorney or agent), then shop around for investors to pay for the nonprovisionals.  In your case, a lot depends on how far along you are in development, how much detail and lead time you gave your attorney, and how good a job he did. 

« Last Edit: 01-18-18 at 07:21 pm by smgsmc »
Logged

bartmans

  • Senior Member
  • ****
  • Posts: 777
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #8 on: 01-24-18 at 05:28 am »

Further, for claiming a valid priority to a provisional application (all features of) the claims as granted should be clearly and unambiguously derivable from the provisional application. This requirement is taken very seriously at the European Patent Office and although the USPTO does not seem so strict, it is my opinion that they also are getting more and more serious about it.
One example where the claim to priority would fail in Europe is the following.

Assume that the priority application states that you may use a mixture of a bacterial species and a yeast species, where the bacteria may be selected from A, B, C and D, while the yeast my be selected from X, Y or Z. In that case the specific combination of bacterial species C with yeast species Y is not deemed to be directly and unambiguously derivable from the earlier application.
You may compare this with the genus-species relationship, where a species is not clearly and unambiguously derivable from the genus. In the above case the genus is all combinations of bacteria and yeats.
Logged

smgsmc

  • Lead Member
  • *****
  • Posts: 2494
    • View Profile
Re: Public use after provisional patent is issued?
« Reply #9 on: 01-24-18 at 03:58 pm »

Further, for claiming a valid priority to a provisional application (all features of) the claims as granted should be clearly and unambiguously derivable from the provisional application. This requirement is taken very seriously at the European Patent Office and although the USPTO does not seem so strict, it is my opinion that they also are getting more and more serious about it.
One example where the claim to priority would fail in Europe is the following.

Assume that the priority application states that you may use a mixture of a bacterial species and a yeast species, where the bacteria may be selected from A, B, C and D, while the yeast my be selected from X, Y or Z. In that case the specific combination of bacterial species C with yeast species Y is not deemed to be directly and unambiguously derivable from the earlier application.
You may compare this with the genus-species relationship, where a species is not clearly and unambiguously derivable from the genus. In the above case the genus is all combinations of bacteria and yeats.
Hi bartmans.  This is an intriguing point.  To simplify the discussion, let me limit the selection to two each.  So the priority application states that you may use a mixture of a bacterial species and a yeast species, wherein the bacterial species is selected from the group consisting of A and B, and the yeast species is selected from the group consisting of X and Y.  I would have thought that the following four combinations are supported:

AX
AY
BX
BY.

So later on, if prior art disclosed AX, AY, and BX, but not BY, I could narrow the claim to BY.  But you are saying that under EPO practice, the priority application would not support such a claim.  Is that correct?  Would it make a difference if the priority application explicitly stated that the following four combinations may be used:

AX
AY
BX
BY

?
Logged
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.087 seconds with 20 queries.