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Possible new inventor here provisional vs non provisional patent

Flushing, NY |

So I created something and have been making it for my friends and they all suggest that I should protect and license it. So I thought why not? I have been selling it for about eight months to friends and from my readings here, I have up to 1 year to file.

Since I publicly disclosed my invention, does a provisional patent application give me an additional year to decide on a non provisional patent or do I have only 4 months left to file a non provisional since I disclosed it? I couldn't find that out in my readings and am confused which option to choose from.

It would be great to use my earnings to cover the cost and I have enough for provisional but if not I think this is a good investment and I can find a lawyer here in the process. Thank you

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Attorney answers 5

Posted

Q: "Since I publicly disclosed my invention, does a provisional patent application give me an additional year to decide on a non provisional patent or do I have only 4 months left to file a non provisional since I disclosed it?"
R: You have only four months left. Once disclosed, a non-provisional patent application that claims the invention must be filed within one year. There really is no good alternative to spending some time with your own patent attorney -- preferrably one licensed to practice in your state because, at the end of the day, you simply want to make money selling your product, not look at a nifty patent that claims the product. Your in-state attorney can help you create a company and work with you on the million and one things that a new business must attend to properly. 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.

Asker

Posted

Great info thank you. I didn't know an ip attorney would do all that for me. I thought I would have to deal with many. Enjoy the new year.

Asker

Posted

And you cleared my confusion. I thought a ppa gave you extra time after disclosure since the ppa gives you the filing date within the year of disclosure. I better hop to it

Bruce E. Burdick

Bruce E. Burdick

Posted

Attorney Ballard is wrong. The provisional will give you an effective priority date within the grace period, and thus gives you one year from the filing date of the provisional (not "an additional year") to file the non-provisional and still have the copendency needed in order to claim the benefit of that effective priority date. So if you filed the provisional now you would gain an extra 8 months (one year instead of 4 months) to file the non-provisional. If you wait until close to the end of the one year grace period to file the provisional, you could in fact stretch that to close to 12 months.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Attorney Burdick, for once, is correct. The disclosure by you of your invention is not prior art to a provisional or non-provisional application filed by you if filed within a year of your disclosure. Sorry for the earlier, incorrect information.

Mark Raafat Malek

Mark Raafat Malek

Posted

I agree that you want to work with a patent attorney, but many patent attorneys have clients all over the country (and overseas). While I agree that you want to have an attorney set up a company with you, your patent attorney and corporate counsel can definitely be different.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Yes, the Questioner can hire a patent attorney in one state and a business attorney in another. But why? The Questioner lives in New York city. You can't swing a cat there without hitting an attorney working at a firm with both patent and business attorneys.

Maurice N Ross

Maurice N Ross

Posted

Sorry to be repetitive, but the problem here is with foreign patent rights.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Maurice: We will have to agree to disagree on the value of foreign patent rights and the return on investment [assuming the money is even available] spent on foreign patents in light of, among many other factors, the cost of litigating overseas.

Asker

Posted

I would have to agree with attorney Ballard on that. Litigation in any area is expensive but patents take the icing on the cake. Would losing international rights hinder a license deal since big companies have the funds to litigate.

Maurice N Ross

Maurice N Ross

Posted

Asker. Based on 30 years of experience I can tell you that you can sabotage your ability to license your invention if you do not protect foreign rights. This is particularly critical in certain industries, including medical devices, pharmaceuticals, telecommunications, electronics, media and computers, and perhaps less important in other industries. Without foreign patent rights, someone can make your product outside of the U.S. where there are no patents and then try to import into the U.S. with impunity. It is very hard to litigate patent cases involving products made abroad in countries where there are no patent rights and then imported to the U.S. This is particularly so of the patent covers a process for making the product as opposed to the product itself---but the practical reality is that if you want to play in the big leagues, foreign patent rights are always critical. Don't misunderstand me----I often advice clients that they might be better off not wasting any time and money on acquiring patent rights---as long as they can make and sell their product without violating patents of others, they can often be successful without any patent protection. Nonetheless, having patent rights adds value from the point of view of investors, particularly in the industries cited above, and losing foreign rights is never desirable. Losing international rights most certainly hinders most licensing deals.

Bruce E. Burdick

Bruce E. Burdick

Posted

Lively discussion after getting the initial misinformation resolved. So with 40 years of experience, and half of it with a multinational corporation, I can say that foreign patents used to be largely of little use except for Europe, but now that the US has relinquished much of its technological and financial lead to Korea and China and the global nature of markets is dramatically increasing, foreign patent protection is much more valuable. Even so, the US remains the big prize and protection here is the goal. Concentrate your efforts here and let your prospect worry about overseas, as by that time the brand name will often carry the day.

Bruce E. Burdick

Bruce E. Burdick

Posted

So, losing foreign rights is water over the dam. Move on and hope it doesn't sink you.

Posted

Attorney Ballard is wrong. A provisional filed within the remaining four months of your grace period will give you an effective priority date within the one year grace period under 35 USC 102(b), and under 35 USC 119(e) gives you 12 months from the filing date of the provisional to file a non-provisional based on that provisional and still have the copendency needed in order to claim the benefit of that effective priority date under 35 USC 119(e). So if you filed the provisional now you would gain an extra 8 months (12 months instead of 4 months) to file the non-provisional. If you wait until close to the end of the one year grace period to file the provisional, you could in fact stretch that to close to 12 months.

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.

Bruce E. Burdick

Bruce E. Burdick

Posted

There are still good reasons to see a registered patent attorney now and not delay. The provisional patent application (PPA) you seem to want to file needs to meet the same 35 USC 112 "written description" requirements (except best mode) as for a non-provisional patent application (NPA) as to a patent claim of the NPA for that patent claim of the NPA to gain the benefit of the priority date of the PPA. That is a little tricky to understand unless you understand the difference between patent claims and patent specifications, which is one of the many reasons this is a job for a registered patent attorney, not a do-it-yourselfer.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Attorney Burdick, for once, is correct. The disclosure by you of your invention is not prior art to a provisional or non-provisional application filed by you if filed within a year of your disclosure. Sorry for the earlier, incorrect information.

Maurice N Ross

Maurice N Ross

Posted

Yes, Bruce is correct. I was also confused. But the real issue here is the impact on foreign filings

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Maurice: We will have to agree to disagree on the value of foreign patent rights and the return on investment [assuming the money is even available] spent on foreign patents in light of, among many other factors, the cost of litigating overseas.

Bruce E. Burdick

Bruce E. Burdick

Posted

Sorry Maurice. The issue is NOT impact on foreign filings. Those rights are GONE. They went bye bye 8 months ago when public disclosure and sales were made without any application having been filed. You and Daniel seem to have overlooked the effect of the absolute novelty bar overseas where there is NO grace period.

Maurice N Ross

Maurice N Ross

Posted

Bruce: you are correct. Foreign rights are lost for any prior disclosures. But not for undisclosed improvements etc. As you know, clever company patent lawyers always find something they can file in foreign countries such as process or method patents

Posted

You need to get something on file in the next four months. A provisional patent application is a good way to get started. You have to convert the provisional patent application to a non-provisional (utility) patent application within one year of filing your provisional. Your biggest issue is that you likely waived your foreign filing rights by disclosing your invention prior to filing a patent application. Contact a patent attorney soon for some more information. You need to move quick in order to get something of any reasonably quality on file.

The answer to this question is for informational purposes only and does not form an attorney-client relationship.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

I initially also thought that he had to file a non-provisional within the next four months to beat the Section 102 one-year disclosure bar. But the new Section 102(b) declares that an inventor's own disclosure does not count when any application [even a provisional] is filed within that year. An inventor can publicly disclose, file a provisional 364 days later, and then a non-provisional 364 days after that which does not violate the Section 102 one-year disclosure rule and which can claim priority from the provisional. Interesting.

Maurice N Ross

Maurice N Ross

Posted

Daniel: True but the asker will lose foreign patent protection in most countries

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Maurice: We will have to agree to disagree on the value of foreign patent rights and the return on investment [assuming the money is even available] spent on foreign patents in light of, among many other factors, the cost of litigating overseas.

Bruce E. Burdick

Bruce E. Burdick

Posted

Maurice and Daniel, you both seem to have missed the fact that there are no foreign rights left for this Asker. Absolute novelty bars killed them 8 months ago. Grace period is a uniquely US concept. You are debating an irrelevancy for this Asker.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Having a grace period before the bar to patentability is most certainly NOT a “uniquely US concept.” See Dennis Crouch’s article “Is Novelty Obsolete? Chronicling The Irrelevance Of The Invention Date In U.S. Patent Law” at http://ssrn.com/abstract=1576564 [specifically note 9 in which he cites numerous analyses of the various grace periods around the world – one of which concluded that 87% of 121 national and regional patent systems provide for some type of grace period]. It is all too easy for U.S. patent practitioners to fall back on the canard that foreign patent rights are automatically lost if the invention is disclosed prior to filing. That’s not true – the threat, however, is a useful tool to spur inventors into filing as soon as the invention is complete.

Posted

Short Answer: Consult a lawyer

You are correct that you have a year to file a U.S. Patent Application after your first public disclosure. However, your international rights are almost all gone as most countries require filing before any public disclosure. As for the provisional, yes, you can file it (as you could a regular application) within the same year that you have from the initial public disclosure. Once you file the provisional, that will give you one year from the filing date of the provisional application to file a regular application. Good Luck.

Posted

You should consult a lawyer and file a patent application very very promptly. You have one year to file a nonprovisional patent application in the US after filing a provisional patent application. Your disclosure could be problematic if you have any interest in filing any applications in countries outside the US. I will say that you would be better served by speaking directly with an attorney confidentially about your issues. For example, you now have memorialized 8 months of an alleged public disclosure. This could be problematic if you go back and look at your notes and you only actually sold for 7 months.

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