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Patent Law Application filing questions.

Oakland, CA |

Hello,

I posted this question before but can't see to read some of the responses.

Anyways. I have a product that I wish to patent. After an attorney conducted the search he said item is patentable.

However this product has been on the market for 5-6 yrs now and others are selling it.

I was told that I can not patent it. But my attorney disagrees and said I can patent it because no one has file a patent on it.

I'm not trying to run others out of business just wanting to stop new-comers.

With everything in consideration I'm not sure what I need to do.

Plus he said that the patent office only searches their own database to make sure there isn't anything similar which there isn't. So he said I can get it. He has 20 yrs exp.

Any suggestions will be greatly appreciate.

Thank you.

Attorney Answers 11

Posted

Hi,
You need to talk to a patent attorney about this product instead of just any attorney. Only someone who is the first inventor to file a patent application can get a patent for this product. To be an inventor, you must have been the one who came up with the idea. Also, one of the requirements to get a patent is that the product must be new or novel. If the product has been on the market for 5-6 years, it can't be patented. Any patent attorney on Avvo can advise you on all of these matters.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Asker, did that patent attorney work for InventHelp or Davison or some other invention promoter. Sounds like something they would recommend, not anything an ethical patent attorney would tell you. Listen to Attorney Robinson. He is right, this is not likely patentable and you are likely wasting your time. Best to call a patent attorney, take what you have from whoever is telling you this crap, and get straightened out with proper advice. You are perhaps being scammed, so be very cautious but move quickly as filing promptly is crucial under the brave new world of FTF.

Posted

Unless you have some improvement that is not already known or on sale, your attorney is wrong. The limit for any grace period is a maximum of 12 months from a first publication or sale.

This comment is NOT LEGAL ADVICE. The question asker and any third-party reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to confirm the accuracy of this comment.

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Asker

Posted

my product has some improvements and although the product has been on the market for 5-6 yrs i have been selling it for just 6 months he said I have 12 months to file and there should not be any issues. He said the way he will write up the patent, claim etc it will show that it is different....

Bruce E. Burdick

Bruce E. Burdick

Posted

Well, you keep changing the facts, which shows the folly of trying to advise you here on Avvo. You need to see a registered patent attorney. If the one telling you to file is a registered patent attorney, he is likely right that you have a patentable improvement. If you are uneasy with that, get a second opinion, but do it quickly.

Posted

The only way you could get a patent in this situation would be if you and your lawyer violate your duty of disclosure to the patent office. You have a duty to disclose all known material information which the examiner may want to consider in evaluating whether you should get a patent. You and this patent lawyer know that the product has been on sale for five to six years, which means that you guys know that your patent is not novel. The fact that a prior art search might not reveal this products does not excuse you from disclosing them. Indeed, the patent lawyer who gave you this advice, in my view, is engaging in unethical and illegal behavior.

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3 comments

Maurice N Ross

Maurice N Ross

Posted

Of course, if you made a substantial improvement to the product, you could patent the improvement. But the improvement must substantially advance the art. A minor improvement will not suffice. And the improvement must be non-obvious, And you must only try to patent the improvement--not the original product. It is possible that you will need a license from a patent that covers the original product before you can sell your improved product.

Asker

Posted

Thanks for the advice I agree and disagree we are not trying to "hide" anything and although I have new improvements to the product. He said that is different enough and we should be fine. Thank you so much sir.

Bruce E. Burdick

Bruce E. Burdick

Posted

You are represented by an attorney and you give us partial facts and ask us to "second guess". If you want a second opinion get one and pay for it so you can reveal your "improvements" in confidence. Anything you get here is pretty worthless without knowing the facts, and you keep changing them here, making our responses even more meaningless.

Posted

If this product has been on the market for several years, it can't be patented, although perhaps you can patent non-obvious improvements. Doesn't matter if the product is covered by a patent or not. And, if you don't disclose the product to the Patent Office, you will have committed fraud, and your patent will be worthless.

Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship.

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2 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

"Doesn't matter if the product is covered by a patent or not." Really? Hmmm, I would not advise my clients that way, as it presupposes there is no infringement of a dominating patent when making an improvement. That is very dangerous advice and often wrong.

Igor Shoiket

Igor Shoiket

Posted

It doesn't matter if the product is covered by the patent or not in the sense that it is the existence of the product (patented or unpatented) on the market that will prevent him from getting a patent on that product. Infringement analysis is a separate issue and is outside of the scope of his original question.

Posted

Your attorney is right - but only partially. When you file a patent application you have a duty to disclose prior art to the patent office. That includes prior sales of the invention.

Therefore, if you comply with your duty of disclosure, the patent office will know of the prior products and use them to reject your application.

Michael
www.accessipgroup.com

The answer provided is only for general information purposes and does not constitute legal advice.

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Bruce E. Burdick

Bruce E. Burdick

Posted

And, Asker you seem to conflate the item improved with the improvement. Which was on sale, the item improved or your improvement. If the item improved, that is not a bar - if your improvement, that is a big problem, perhaps fatal to a patent application. I think you need a second opinion to get this straight, especially since you seem to be getting conflicting advice from two attorneys.

Posted

I agree with my colleagues. I would add that you need to get yourself a new patent attorney. The advice you have received is dead wrong - if what you want to patent has been on sale for as long as you say, you cannot get a patent. In addition, the Patent Office does NOT only search its own patents. Patent examiners search them, but also search foreign patents, published literature and conduct web searches.

I commend you for following up because, unless you completely misunderstood a correct explanation (which seems doubtful), no reputable patent attorney would have given you the advice you recounted here.

This information is intended to be general and educational in nature. It is not intended to be specific legal advice or establish an attorney-client relationship. I require a signed retainer agreement from a potential client to establish an attorney-client relationship and before I will provide specific legal representation.

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3 comments

Asker

Posted

ok thank you. I just sucks because I have already paid him to conduct a search and that money is gone I just dont to keep pouring money into a well with no results. Thank you sir.!

Bruce E. Burdick

Bruce E. Burdick

Posted

I strongly disagree with that answer. You may have a fine patent attorney. What you need is a second opinion to determine where you stand.

Asker

Posted

Hi Bruce, I agree on the 2nd opinion is needed here. If my product has made "improvements" am I granted a patent only on the improvements or the entire product? Which will still allow exisitng sellers to sell it which I'm fine with.

Posted

Is "an Attorney"= Patent Attorney? I seriously doubt it, as a 102 rejection is the abc of patent law.
You need to talk with a USPTO Registered Patent Attorney, which are highly specialize in this matters and will save you money, time, and put your hopes into a realistic goals.

USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Indeed, in this case the former 102b of patent law, which under the AIA has become the 102(a)(1) of patent law and no longer requires 1 year.

Posted

Assume that the Product-In-The-Marketplace contains elements A, B, C, and D. It's been on sale for a long time. You come along and ADD to the Product-In-The-Marketplace some new elements that aren't simply obvious additions to the product -- in fact, in the consumer's mind, those new elements are improvements on the product. So Your-Improved-Product contains elements A, B, C, D, E and F. That product may be patentable. And, if it is, that patent would preclude everyone else from making, using, selling and importing Your-Improved-Product. Everyone, however, may still sell the Product-In-The-Marketplace -- just not your improved version.

The above 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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5 comments

Mario Sergio Golab

Mario Sergio Golab

Posted

However if the base product, containing elements A, B, C, and D, is still protected by a valid patent, you may no be able to sell, or even use, your improved product, containing elements A,B,C,D, and E, without a license from the patent owner of the base product.

Bruce E. Burdick

Bruce E. Burdick

Posted

There is an assumption in your answer, Daniel, that the "product in the marketplace" is not patented ["Everyone, however, may still sell "Product-In-The-Marketplace"] I did not see that in the question, and if not there, that seems a dangerous assumption from just a statement that "others are selling it" [under license? as distributors of a patentee? as salespersons for a patentee?]. How is it you know the "Product-In-The-Marketplace" is not patented?

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

If you read the questioner's comments to his previious post he wrote: “The product that I have has been on the market for 4-5 years. I've paid an attorney to do search and we can not find anything. He is certain he can get me a design patent but I really want utility patent.” My response, therefore, did not assume the Product-In-The-Marketplace is not patent-protected. My premise that it's not patent-protected was based on the questioner's assertion that a patent search was performed.

Mario Sergio Golab

Mario Sergio Golab

Posted

Daniel. No doubt that when we read the questions, we do not have all the details and have to assume facts to provide an answer that would be helpful to the asker. In this case I took a different interpretation. I cannot believe that "an attorney conducted the search he said item is patentable". and then said "I can patent it because no one has file a patent on it". So I assumed the patent search was not properly done. Obviously the attorney's advise is malpractice 101. The fact that the product is in commerce is not conclusive as to whether there is a patent behind it or not. Thus I wanted to supplement you answer with the caveat of beware of improvements over existing products. You frequently bring an alternative point of view that is refreshing. Good job.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Thanks, Mario. Your caveat to be careful when practicing improvement inventions is, of course, a good one. I should have included it in my response. I enjoy the respectful interactions we small band of IP attorneys engage in when answering these Avvo questions. It makes us all better attorneys.

Posted

This question shows the confusion that novices have when they rely on "I was told" to question what their patent attorney tells them and the confusion novices have about improvement inventions and dominant and subservient patents, and the problem that overuse of pronouns like "it" and "he" and "someone".

What I decipher your question to say is that some non-attorney told you that you can't patent an improvement to something that has been out for 5-6 years. That is utter BS and wrong. Almost every patent is an improvement to something that has been out. The wagon is an improvement on the wheel, the buggy was an improvement on the wagon, the car was an improvement on the buggy, the hybrid car is an improvement on the car, the all-electric car is an improvement on the hybrid (although the first cars were often crude electric cars). You get the idea.

So, I think your patent attorney is likely right that you can get a patent on your improvement. That patent may be quite limited, even to the point of being worthless, but he can get it if you are willing to pay him to do so. My concern is that a patent may not be what you need. You may need just to get to market first with the product and establish a brand name and perhaps file a provisional patent application so you can put "patent pending" on your labels and keep would be copyists wondering if they can really safely copy and forcing them to pick a lesser known name to compete with your better known name. With the new "Forced to File" (First to File or First to Futility) system big software lobbyists pushed through the best Congress money can buy, it is not clear that patents are a good investment, and note that I am a registered patent attorney saying that. You might want a second opinion if a patent attorney is pushing you to file a patent. I imagine your patent attorney is not "pushing" you but rather just telling you he can get one if you want to pay him to do so, and in that he is likely right.

Here is a suggestion you will appreciate if you follow it: Go to your library and check out and read Stephen Key's book "One Simple Idea." You need to know what a successful inventor who has licensed a number of inventions sufficient to do it full-time says about how he got there, and it was not so much through patents as it was through paying attention and moving faster than his competition.

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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Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

I second the recommendation to read Stephen Key's book. He gives short shrift, however, to the need to commission a "freedom to operate" opinion from a patent attorney before putting your product into the marketplace. Query Google for the phrase and then speak with a competent patent attorney.

Posted

Short Answer: You can't file a patent on something that is already in public use. Your attorney may have found aspects of your idea that are different than what is on the market. If that is the case, then those aspects may be patentable. Good Luck.

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Posted

Good Morning. If the same product, without material differences, has been on the market for 5-6 years, you, most likely, cannot patent it under current patent law. An inventor is barred from patenting an invention that has been known within one (1) year of the date of the patent application. This statement does not constitute legal advice and does not form the basis for an attorney-client relationship and it is being given based on a very limited set of facts provided.

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