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Are provisional patent applications meant I be secret?

Boise, ID |

I just got a provisional patent application drafted by an agent. When trying to license an idea, is it appropriate to divulge your ppa to a potential investor? Is there any risk in doing so or are they looking to see if my ppa will provide adequate protection for the future non provisional?

Attorney Answers 5

Posted

That depends on the PPA. The purpose of aPPA is to key you disclose and try to MARKET the invention. what is unclear to me is how good is your PPA.If it's good then disclosing it is the way to go generally. I am generally opposed to disclosing patent claims, so my PPAs generally have no claims.If your PPA has claims, I would suggest not disclosing them. certainly they see interested in seeing if your PPA will provide adequate protection for the future, specifically whether you are likely to be able to stop them if they don't cut a deal with you and if the prospective patent coverage would stop their competitors. Either it does or it doesn't.Uppity have to confidently say it unquestionably will and confidently disclosing the PPA send the message you are confident in the PPA. anything less signals reputation that is off-putting. Your decision. My clients disclose PPA's. I want the prospective licensee to worry that we will eventually sue them if the try to steal it by infringingand we are confident it will stand up. Your licensee wants that confidence.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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4 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

typo "aPPArently is to key" should be " a PPA is FOR A YEAR to PROTECT YOUR PRIORITY DATE AND LET you"

Bruce E. Burdick

Bruce E. Burdick

Posted

another typo "Uppity have to"--> "You may have to act uppity and just"

Asker

Posted

Well I think he was qualified being an inventor and working under an attorney. Your advice even in other answers was very helpful

Asker

Posted

Well I think he was qualified being an inventor and working under an attorney. Your advice even in other answers was very helpful

Posted

First, drafted is not the same as filed. Let's hope that your provisional application was filed and acknowledged by the PTO.

Second, assuming the application was filed, then deciding whether to disclose the information in that application is no different than the decision whether to disclose any other information about your potential, money-making invention. If your application succinctly, accurately and persuasively describes your invention then use it to raise money or to entice someone to license the rights to make and use, or make and sell, the invention. If for the former, then the application will be only one part of the entire business plan that you will dislcose. If the latter, then -- unlike my colleague -- I think it's important for you to disclose the entire application, including claims if any. A potential licensee needs to know what you think your invention is in order to diligently investigate whether it has the legal duty to license from you or whether it can simply make and sell the product without your permission.

BTW: Your sentence, "When trying to license an idea, is it appropriate to divulge your ppa to a potential investor?" makes little sense. Ideas are free for everyone and are not licensed -- what is licensed are the rights to inventions [that is, concrete products or services]. Moreover, you've combined two fundamentally different business concepts: Licensing the rights to practice the invention and raising money from investors so you can make and sell the invention.

Using a patent agent was fine for drafting your provisional. You now need, however, an intellectual property attorney to assist you to package the information about your potential, money-making product or service and to present it to those interested in investing or licensing and, then, to negotiate the deal. That attorney should be licensed to practice in your state. Good luck.

The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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9 comments

Asker

Posted

Depends on how you define idea. I took attorney Bruce comment to heart "Patent attorneys routinely draft strong patents without a prototype or an engineer" So I asked the agent if he knew how to my idea into an invention and he did since he has an engineering background. I thought it would be best to seek out manufacturers myself or use marketing agents and scouts to promote my ideas. The attorneys I spoke with did not say they could help in that matter. Do you have a manufacturer network when clients use your service?

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

My analysis does not depend on how the word "idea" is defined -- it already has a set definition. And that definition does not include invention. Two different concepts, two different words. No, I don't have a "manufacturer network" that can make every patentable product that my clients want patented. Different products, different manufacturers. Your attorney can be there, like I said in my response, to "assist you to package the information about your ... product ...to present it to those interested in investing or licensing and ... to negotiate the deal." If you don't want an attorney's assistance to do those tasks then don't hire one.

Asker

Posted

Well that is what I thought that to until reading some responses from attorney Bruce who said "So the phrase "idea is not an invention" can have three different meanings, to which are incorrect. The most common meaning, and the one usually meant on Avvo is the true statement that "many ideas are not patentable". Another possible meaning of "all ideas are not inventions" is that "an idea can never be a patentable invention" (which is what I think you interpreted the phrase to mean) and which is a false statement since all patentable inventions are ideas that have been reduced to practice and which meet other statutory requirements to be patented. A third possible meaning of "an idea is not an invention" is "an idea cannot be an invention" which is untrue since the terms are really synonyms since all ideas are invented by someone in order for the idea to exist. The problem really comes when talking to patent attorneys who think of the term "invention" in terms of "protectable invention" or "patentable invention" since that is what patent attorneys deal with in their daily practice."

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Really? You're going to debate the difference between an idea and an invention with a patent attorney? Ok, you win. I have no interest in diabusing you of whatever conclusion you reach. Good luck.

Asker

Posted

Not debating just quoting another attorneys response. I actually took his advice and the agent said he could do it. I got my idea turned into a sort of blueprint on how to create it without actually creating it. Patents from what my agent said is you have to use broad terms of recreation because it will stop someone from creating an inferior model like a grey good which can hinder profits. So what do you call me having a ppa on something I don't even know how to make which was my idea? I will let the potential licensee deal with efficiency.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

A patent application must be sufficiently detailed to enable one skilled in the relevant art to make and use the invention. If you think that a patent application's written description of, and diagrams showing, a product or method is an "idea" then I suggest you re-think your definition of "idea."

Asker

Posted

Well Attorney Ballard, you guys are very technical when I layman answered, I got 4 defintions of an idea. And as you know In law, science, social science, economics etc, interpretation can make any field a pain to be in. But it technically is my idea "literally an idea combining two technologies" and I asked the patent attorney who is fluent in electrical engineering, can you turn this idea into an invention without a prototype and he did. If it were carpentry ( my skill) then my idea would be made into an invention with my own two hands.

Asker

Posted

It certain cases you are 100% correct. If it was brand new technology you are right. I can't patent an idea for a 1 inch smartphone because the technology and knowhow does not exist. But when combining two existing technologies, your idea can be turned into an invention by a qualified person in the craft since you just need the knowhow to bridge technologies. If sunction cups exist and I thought why not use it to plunge toilets. I can easily have a patent drawn up for a stick with suction without ever bringing it to practice. An idea is "any conception existing in the mind as a result of mental understanding, awareness, or activity. " and a concept" is an idea of something formed by mentally combining all its characteristics or particulars; a construct." So my idea was turned into a concept by the attorney and the licensee will turn it into a construct.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

However you want to make sense out of your world is fine by me. Good luck.

Posted

When you say you "got" a provisional, I assume this means that you (or your patent agent) filed a provisional application. For most individual inventors and start-ups, the purpose of filing a provisional application is to allow you to market the invention to potential investors or partners without worrying that they will steal your invention or that you will lose your patent rights. If you are trying to market or license your invention, it is entirely appropriate to disclosure your provisional to potential investors (although it is always preferable to do so pursuant to a non-disclosure agreement, if possible). I am not one of those who would withhold a portion of the application from investors---this is usually unproductive because most investors want to see the entire PPA before deciding whether to go forward. Note, however, that this is based on the assumption that the PPA is well drafted by a professional patent agent (or preferably, a patent attorney) with at least enough training and sophistication to draft a PPA that will have a fighting chance of being upheld in court when attacked by a litigator such as me. Most PPA's that are filed without patent attorneys (or at least very experienced patent agents) are not worth the paper they are printed on---and I would not show those to investors simply because serious investors will only need a couple seconds to figure out that they are worthless.

The big problem with disclosure of your PPA is that it could defeat your ability to obtain foreign patent rights. Using non-disclosure agreements to assure that disclosures are non-public can sometimes solve this problem. But most investors who know what they are doing will refuse to sign non-disclosure agreements. Unfortunately, many individual inventors or small start-up companies with limited budgets find that they must sacrifice foreign patent rights in order to make the disclosures necessary to attract investors. This is a fundamental flaw in our patent system, but don't hold your breath until this is fixed. Of course, companies with adequate budgets often start by filing non-provisionals and foreign applications at the same time so that their rights are not defeated by prior public disclosures. You won't be surprised to learn that the system favors big companies.

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Asker

Posted

With the filing date from my ppa do I still have 12 months to file a pct? I did not disclosure prior to the ppa beino filed

Posted

Short Answer: yes, but...

You have done the right thing by filing a patent application to protect your invention. Now, is there a guarantee that those to whom you will disclose your invention won't use it without your consent? No it does not. What it does mean is that you have options in defending your rights. For e.g., you can send warning letters, and, if needed, take them to court to collect profits or royalty after the patent issues. Good Luck.

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Posted

What has the potential investor asked to see? Have they asked to see your filed provisional?

I'll just add a few items for you to consider as general information:
I had a former client who was paid money by the licensee for an exclusive option period so that the licensee could inspect the patent documents with the security that the inventor would not seek other licensees during the option period. Perhaps something like that could work for you with your potential investor.

I think you will need to wow your potential licensee in at least three areas: manufacturability (can I make it cheap enough to make a profit), marketability (can I sell enough of these things and make a profit), and patentability (are there good or bad odds at getting a patent or patents that protect the marketshare).

Having a tangible version of your idea is always very helpful in talking with a licensee.

If your provisional has claims, I would advise against showing the claims. One reason to avoid showing the claims right away is that if your licensee could attempt to design around your claims. In general, I would advise showing claims only when you know the licensee is serious (this could be through a signed letter of intent, a paid option as mentioned above, etc.)

Again, this is not legal advice and this is general purpose information.

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