IDS and website

[marigny]

Hello! I was just wondering the proper way to fill out IDS form SB/08/b when it comes to declaring a website. The information they require for Non-Patent Literature Documents doesn't seem to relate to declaring a website.

Also, this website is my own (the patentee). How should I notate that the product I am attempting to patent is being sold on this website? I don't want them to think that this website product is prior art not created by me. Also, probably within a month or two, the product will be available for purchase in many online stores, and some small brick and mortar stores. Do I list these stores on an IDS as well? I am hesitant in case some of the stores back out by the time the patent application is being reviewed.

Thanks again!

 

[divgradcurl]

Hello! I was just wondering the proper way to fill out IDS form SB/08/b when it comes to declaring a website. The information they require for Non-Patent Literature Documents doesn't seem to relate to declaring a website.

Good question. I don't know exactly what would be the best way to go about this -- maybe printing out the main page, and any other pages that are relevant to your invention, along with providing a website link. Most browsers will print pages with a date and link at the bottom, maybe that will work. As long as you include all of the relevant pages, there shouldn't be a problem.

Also, this website is my own (the patentee). How should I notate that the product I am attempting to patent is being sold on this website?

You can indicate this information in a description of the art. See MPEP 609.04(a):

"Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability."

609.04(a) Content Requirements for an Information Disclosure Statement [R-5] - 600 Parts, Form, and Content of Application

Also, probably within a month or two, the product will be available for purchase in many online stores, and some small brick and mortar stores. Do I list these stores on an IDS as well? I am hesitant in case some of the stores back out by the time the patent application is being reviewed.

If these websites come into being after the priority date of the application, they are not prior art, and do not need to be disclosed. Only those websites which existed prior to your priority date need to be disclosed.

 

[marigny]

If these websites come into being after the priority date of the application, they are not prior art, and do not need to be disclosed. Only those websites which existed prior to your priority date need to be disclosed.

Duh, I should have realized that, not thinking. But, what about this...My website was put up after I put in my provisional application, but before I put in my utility app. My utility application is more comprehensive than my provisional and my finished product is more like my utility app. Do I need to include this website since my provisional was sent in before the website was running?

Also, in 'Patent it Yourself' they state in a few places that if your product is successful in the marketplace that this, "militates strongly in the favor of patentability." I think this primarily is meant for the times when secondary factors in determining unobviousness are considered. But, do you think it may influence an examiner from the start when making decisions if he or she knows that this is a product already on the market? And if so, is the IDS the best place to make this known?

Thank you! You are always so helpful

 

[divgradcurl]

Duh, I should have realized that, not thinking. But, what about this...My website was put up after I put in my provisional application, but before I put in my utility app. My utility application is more comprehensive than my provisional and my finished product is more like my utility app. Do I need to include this website since my provisional was sent in before the website was running?

The safest rule to follow is that if you have to ask yourself whether or not to include it, include it. Better to have to spend some time explaining now rather than later, when you are facing losing the patent due to inequitable conduct. Further, if there is new matter in the nonprovisional application, then the website would be prior art to the nonprovisional application, as any new matter will not be entitled to the priority date of the provisional application.

Also, in 'Patent it Yourself' they state in a few places that if your product is successful in the marketplace that this, "militates strongly in the favor of patentability." I think this primarily is meant for the times when secondary factors in determining unobviousness are considered. But, do you think it may influence an examiner from the start when making decisions if he or she knows that this is a product already on the market? And if so, is the IDS the best place to make this known?

Correct, "success in the marketplace" is one of the "secondary indicia of nonobviousness." If, during the prosecution of your patent (or during a later reexamination or trial where invalidity is a defense), if you have an obviousness question, then the "success in the marketplace" can be a factor you use to overcome the question of obviousness.

However, other than that, "success in the marketplace" is unrelated to patentability, so it should not have any impact on the prosecution of the patent.