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Provisional Patent, public disclosure and International Protection

New York, NY |

From my readings, I am under the impression that even a provisional patent filing date gives me a one year deadline to file a PCT. During this time, I am free to sell, advertise and market my product. I am curious as to how a patent office determines when a website or public disclosure was first officially made. A lot of websites, forums and articles do not always timestamp the date the post was made. Since a lot of foreign countries are much more stringent on novelty, can this public disclousure hinder my changes of foreign patents?

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Attorney answers 5

Posted

Q: "I am curious as to how a patent office determines when a website or public disclosure was first officially made."
R: You should read a few recent court decisions that address how the "on sale bar" is analyzed under U.S. law [visit the links below]. Your own patent attorney will have to evaluate how the applicable rules are applied to your particular situation.

Note: When examining a patent application, the Patent Office does not determine when the claimed invention was first offered for sale. That chore is done only when the validiity of the patent is challenged either in court or in a proceeding before the Patent Trial and Appeal Board.

Q: "... can this public disclousure hinder my changes of foreign patents?"
R: Yes. How has to be determined under the law of the country where you seek patent protection.

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

Even provisionals can be complex. Seems like they should eliminate that 1 year grace for provisionals due to problems. I usually don't takes chances and will file provisional before disclosure but I just always wondered once I file for a non provisional, how can they tell if I posted on that website before I filed for the provisional. Websites don't always log when something was edited.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

The "they" in your comment can only be a company or person who's financially very motivated to invalidate the patent that you're granted. So they will hire whoever is necessary to try to prove you offered your invention for sale more than a year before you filed your patent application. But even more fundamentally: You will be asked, under oath, when you first published your invention for the world to see, where you published, why, and what you disclosed. You must answer truthfully. If you don't, and are found out, the patent will be invalidated, you will be sanctioned, and Santa Claus will never again visit your home.

Posted

It is good you ask these questions before proceeding. You are smart to find out as this can be the difference in success and failure and it is so true than "an ounce of protection is worth a pound of cure".

A patent office determines public disclosure based on documentary proof. For example, in the USA by regulation all communications with the patent office must be in writing (hard copy or electronic). So you need documentary proof and it needs to be corroborated. The USPTO will accept declarations (a special form of statement) unless there is evidence refuting the statement. Also, the PTO accepts the date of filing as the date of invention absent some other proof, as there is a declaration filed as a required part of the application. That will have the effect of a disclosure date once published or issued as a patent.

As of 2013-03-16 the US is substantially harmonized with other nations, and is as stringent on novelty as any. What you likely refer to is the grace period. In the US a public disclosure made by the applicant less than a year before the filing date is not prior art. In most foreign countries it is prior art. So yes, that public disclosure might very well cost you your chances of foreign patents in many countries. That is why prompt filing is so important in patent matters.

You need to keep in mind that a provisional patent is NEVER published by the patent office, but rather is kept secret and yet confers a right of priority upon which US non-provisional patent applications and foreign patent applications can be based. It is one of the many great advantages of provisional patent applications. The potential for loss of foreign patent protection if you do not understand that this starts a one year period during which foreign patents must be filed, if they are to be filed, is important and indeed crucial if foreign patents are important to you.

This is no business for amateurs. You need a registered patent attorney. No exceptions to that and no excuses will suffice to replace the skills of a registered patent attorney.

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

first quote, I actually said "prevention" not "protection" but that smartphone has a mind of its own and "protection" fits just as well.

Asker

Posted

Thank you for your answer you answered one of my questions perfectly. I was unsure if Foreign countries honored provisional filing date. I would never take any chances and just file a provisional right away but what I meant for the first question is, say I file a provisional patent today. Now I am able to publically post about my invention. When USPTO and foreign patent offices review my patent, how do they know when I disclosed it? Websites, forums and online articles don't always show the date it was submitted. Even though I publically disclosed after I filed, can they see it otherwise and think I disclosed prior and decline my patent?

Maurice N Ross

Maurice N Ross

Posted

Asker: Your problem will not be with the USPTO and foreign patent offices---they will accept declarations of you and your attorney during patent prosecution. The problem will come when you are in litigation with a competitor who wants to invalidate your patent--that competitor will then use whatever evidence it has concerning your public disclosures to demonstrate the existence of an on-sale bar. Thus, you need to be careful that your public disclosures make clear the date disclosure and make sure that the contents contain sufficient intrinsic information to support your position. The key thing is that in many countries, even disclosures after you file you provisional but before you file your foreign patent application will invalidate the foreign patent applications. The big boys who know what they are doing refrain from public disclosures until both US and foreign patent applications are filed, and except for industries where the one year of additional protection is important (mainly pharmaceuticals), the big boys don't mess with provisionals---they file non-provisionals and then expedite filing of foreign counterparts if not simultaneously than as soon as possible.

Posted

www.archive.org has a way back machine

I have seen it used by the Patent Office to show when a website looked a certain way.

Posted

Possibly, like most things it depends on the facts involved.

Posted

Short Answer: Reasonable Inquiry!

The patent office will conduct a search of the prior art based on the resources that the patent office has available to it. In addition, the inventor(s), his attorney, and others with a duty of disclosure are obligated to disclose their knowledge of the prior art to the patent office.

Your point about website disclosure dates is part of the bigger puzzle of how to broaden the search tent to find more of what is out there and relevant to the patent. This also ties into your next question as to foreign novelty requirements; yes, it is possible that the PTO here won't find a reference and a foreign office will, in which case, if the prosecution in the US is still open, the PTO examiner will take that newly found reference into consideration.

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