Filing of patent disclosure document deposit request

[Amyloo]

What is the name of your state? CA
Hello,
I am in the process of marketing a toy, and filed a "Disclosure Document Deposit Request" form with the patent office in November 04. The fee is $10.00 and the form says it is held for two years and basically is notification that I am working on my toy. (kind of an "I got here first" form.) I am now in the process of submitting to toy companies, and obtaining drawings, etc. Am I ok for a while, (maybe six months) or should I file my patent pending application right now? Thank you.

 

[divgradcurl]

I am in the process of marketing a toy, and filed a "Disclosure Document Deposit Request" form with the patent office in November 04. The fee is $10.00 and the form says it is held for two years and basically is notification that I am working on my toy. (kind of an "I got here first" form.) I am now in the process of submitting to toy companies, and obtaining drawings, etc. Am I ok for a while, (maybe six months) or should I file my patent pending application right now? Thank you.

First off, just so you (and everyone reading this) knows, a disclosure document provides essentially no protection at all -- the only thing a disclosure document may provide is evidence of a "conception date" in the event that a later patent application for the invention is challenged in an interference proceeding. Other than that, their isno protections gained by a document disclosure.

Also, a document disclosure does not change any time barriers, such as the 102 bar, which requires than an application be filed no later than 1 year after the first public disclosure of the invention.

Filing a provisional patent application (basically, simply a detailed description of the invention) will allow you to both avoid screwing up and missing a 102 deadline, and will provide you with a "priority date," or actual date of invention -- provided, of course, that you convert the provisional into a nonprovisional application within a year.

 

[Amyloo]

Thank you. Can you please clarify what exactly a "public disclosure of invention" is? Is it sending out an e-mail to different places to see if they will market/license? Or is it a more "formal" presentation? Thank you.

 

[divgradcurl]

Can you please clarify what exactly a "public disclosure of invention" is?

Unfortunately, no. There is no cut-and-dried answer to what is and what is not public disclosure -- it depends enitrely on all of the facts of the situation, viewed in light of the statutes and caselaw.

Is it sending out an e-mail to different places to see if they will market/license?

Here's what the patent office has to say about it:

" If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries."

http://www.uspto.gov/web/offices/pac/doc/general/index.html#novelty

I believe that there is a distinction drawn between "sales" and "marketing" in the case law, but I don't have the references handy.