Petition To Make Special

[Celia2]

California,
I have already submitted a Full Patent application. Since my invention has to do with Freeway billboards, it is virtually impossible to keep it a secret until the patent issues. I am trying to decide the business plan to market the invention.

Most probably you would say no to making an infomercial CD that explains the
invention with samples and send it to the top 100 companies to see if they
like it. You might recommend not to do it since the patent has not issued
yet, and if one of the companies, say one in South Carolina, decides to go
ahead and use it without our permission, we have no recourse since we do not have a patent yet and we have not even asked them to sign an NDA.

The next scenario: We try to sell the product to only one company without
asking them to sign an NDA and they like it and they decide to go ahead and
do it on their own. You would say that we have no recourse since we do not
yet have a patent and we should have asked them to sign an NDA.

Third scenario: We are being professional and show it to a company and we
ask them to sign an NDA and they like it and ask us to go ahead and make one for them to put on top of their one story building next to the Freeway.
Perfect, we sold one. Now we have 1000 people every hour looking at it whom
have not signed an NDA. They decide that they want to go and do it
themselves without our permission. You would say that we have no recourse.

If the above scenarios are accurate, due to the nature of my invention
(could not be kept secret) then the best business plan would be to expedite
the patent application process according to section 708.02
Petition To Make Special.

Is the above a correct analysis?
Thanks
Celia

 

[divgradcurl]

Most probably you would say no to making an infomercial CD that explains the
invention with samples and send it to the top 100 companies to see if they
like it. You might recommend not to do it since the patent has not issued
yet, and if one of the companies, say one in South Carolina, decides to go
ahead and use it without our permission, we have no recourse since we do not have a patent yet and we have not even asked them to sign an NDA.

The next scenario: We try to sell the product to only one company without
asking them to sign an NDA and they like it and they decide to go ahead and
do it on their own. You would say that we have no recourse since we do not
yet have a patent and we should have asked them to sign an NDA.

Third scenario: We are being professional and show it to a company and we
ask them to sign an NDA and they like it and ask us to go ahead and make one for them to put on top of their one story building next to the Freeway.
Perfect, we sold one. Now we have 1000 people every hour looking at it whom
have not signed an NDA. They decide that they want to go and do it
themselves without our permission. You would say that we have no recourse.

You've already filed your nonprovisional application, so you already have a priority date -- it's not like anyone else will be abel to "steal" your idea and patent it themselves. However, you are correct in that, until a patent actually issues, you have nothing to assert against someone else. You could mark the products "patent pending" or "patent applied for," but that still doesn't give you anything to assert. Further, any "infringement" that occured prior to the patent grant is not really infringement, because there is no patent to infringe, so you can neither stop it nor be compensated for it.

So, whether or not you wait for the patent to actually issue or not is a business decision.

 

[Mec4040]

Hello,

Sorry I cannot be of any help to you, but have a question about something mentioned.

You wrote about:
"If the above scenarios are accurate, due to the nature of my invention
(could not be kept secret) then the best business plan would be to expedite
the patent application process according to section 708.02
Petition To Make Special."

What does it mean to "petition to make special" does this mean you can rush your idea to get approval?

Thanks for the help,

Lisa S

 

[divgradcurl]

708.02 Petition To Make Special [R-2]

37 CFR 1.102 Advancement of examination.

**>

(a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.<

(b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.

(c) A petition to make an application special may be filed without a fee if the basis for the petition is the applicant's age or health or that the invention will materially enhance the quality of the environment or materially contribute to the development or conservation of energy resources.

(d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm#sect708.02

 

[Mec4040]

Hello again,

So based on the reasons to make special, how would that apply to making an invention with billboards?

I dount understand how the invention idea mentioned in this topic, falls under the means to getting a 'special' look?

Could someone give example why one would use the special request in laymen terms. Thanks


Lisa S

 

[divgradcurl]

Hello again,

So based on the reasons to make special, how would that apply to making an invention with billboards?

I dount understand how the invention idea mentioned in this topic, falls under the means to getting a 'special' look?

Could someone give example why one would use the special request in laymen terms. Thanks


Lisa S

There are numerous reasons why an applicant can request that their application be "made special" and receive priority review -- you just have to file a petition stating a proper reason (may be some other paperwork involved to, depending on the reason) and pay the fee as stated in 37 CFR § 1.17(h). The reasons given above -- in the public interest, advanced age, etc. -- those are just ways of getting an application "made special" without having to file the fee.

But if you are willing to pay extra, and you can allege one of the reasons listed in MPEP 708.02: http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm#sect708.02
you can have your application made special and advanced out of turn. It doesn't always save all that much time, and its an extra $130, so many people don't bother with it unless time really is of the essence -- but if you can allege one of the reasons in MPEP 708.02, you can, if you want.