Provisional Patent Application and Inventor Logbook - Invention Protection?

[olimits7]

What is the name of your state (only U.S. law)? New Jersey

Hi,

I'm currently working on a product idea I have, and I'm trying to fully understand how a "provisional patent application" and "inventor log book" can protect my product idea from other companies trying to patent or sell my product idea.

Based on my research online this is the information I currently have been able to gather regarding this topic:

If I apply for a "provisional patent application (PPA)", after a "public disclosure/sale offer" occurs I have a 1 year grace period to apply for a "non-provisional patent application (NPA)".

However, if I don't apply for an NPA and my PPA expires after the 1 year grace period then this counts as a "bar to patenting" and I will no longer be able to patent my product idea; right??

1. So if the above situation counts as a "bar to patenting" my product idea; I will never be able to patent my idea, and no company or any other person will ever be able to patent my product idea as well, due to "public disclosure/sale offer"??

If this is true, then I guess I can see this as a proand a con. For a pro, at least I know that no one or company could ever try patenting my product idea, but as a con I will also never be able to patent my product idea as well.

2. To avoid the above situation from occurring; can I "public disclose/sale offer" my product idea to a company to see if they want to license my idea without having a PPA or NPA filed, but having a properly kept "inventor log book" instead??

For example, can a properly kept "inventor log book"; which contains detailed information regarding my product idea, signed, dated, and also have a witness sign it be enough for court if a company tries to patent or sell my product idea??

However, after re-reading my question number 2; even if I didn't have a PPA or NPA there is still "public disclosure/sale offer" occurring so this would again only give me a 1 year grace period before a "bar to patenting" occurs; right??

I guess the only difference in my question 2 is that I would save money by not submitting a PPA.

3. If the above is true, then what is my best option to protect my product idea, but at the same time still be able to contact companies to see if they are interested in "licensing" my product without receiving a "bar to patent" after 1 year due to "public disclosure/sale offer"??

Thank you,

olimits7

 

[FlyingRon]

Right, if you file a provisional and then bring the product to market, the "novelty" has worn off and you're not eligible for a patent. If you can show that you had made the disclosure and the failed to obtain patent, you can use that to show the lack of novelty and challenge other patents applied for subsequently.

I'd have a non disclosure agreement with anybody you show the patentable information. The notebook helps give you supporting evidence for establishing date of invention but it doesn't given you indefinite leave to not file even a provisional patent. The longer you hold out the longer the fact that the idea is no longer novel (or ceases to be novel in light of some other person developing the same thing) occurs. You can't go back after they get their patent and waive your notebook and say I came up with it first but never got around to patenting it.

Your best bet if the idea is patentable is to get the PPA in and follow it up as soon as you can with a NPA. I'm not sure why you are screwing around risking losing your patent rights in the interim.

 

[divgradcurl]

What is the name of your state (only U.S. law)? New Jersey

Hi,

I'm currently working on a product idea I have, and I'm trying to fully understand how a "provisional patent application" and "inventor log book" can protect my product idea from other companies trying to patent or sell my product idea.

Based on my research online this is the information I currently have been able to gather regarding this topic:

If I apply for a "provisional patent application (PPA)", after a "public disclosure/sale offer" occurs I have a 1 year grace period to apply for a "non-provisional patent application (NPA)".

That is correct, you must file a patent application (either provisional or nonprovisional) within 12 months of the first public sale or use. 35 U.S.C. 102(b).

However, if I don't apply for an NPA and my PPA expires after the 1 year grace period then this counts as a "bar to patenting" and I will no longer be able to patent my product idea; right??

Correct. If a provisional is allowed to expire without a follow-on application or conversion to a nonprovisional, then it is as if the provisional never existed, and you would be outside of the 1-year window after first public sale or use.

1. So if the above situation counts as a "bar to patenting" my product idea; I will never be able to patent my idea, and no company or any other person will ever be able to patent my product idea as well, due to "public disclosure/sale offer"??

If this is true, then I guess I can see this as a proand a con. For a pro, at least I know that no one or company could ever try patenting my product idea, but as a con I will also never be able to patent my product idea as well.

Unless someone else has already filed a patent application that covers the invention, in this country or another via the PCT. But generally speaking this is a correct statement.

2. To avoid the above situation from occurring; can I "public disclose/sale offer" my product idea to a company to see if they want to license my idea without having a PPA or NPA filed, but having a properly kept "inventor log book" instead??

For example, can a properly kept "inventor log book"; which contains detailed information regarding my product idea, signed, dated, and also have a witness sign it be enough for court if a company tries to patent or sell my product idea??

However, after re-reading my question number 2; even if I didn't have a PPA or NPA there is still "public disclosure/sale offer" occurring so this would again only give me a 1 year grace period before a "bar to patenting" occurs; right??

Correct. Your inventor's log, or any other evidence, can be used to prove an earlier date of conception of a patent (earlier than the filing date) for purposes of trying to "swear behind" prior art. But this does not affect the 1-year statutory bar of 35 U.S.C. 102(b).

I guess the only difference in my question 2 is that I would save money by not submitting a PPA.

No, you you need to file the application within 1 year of the first public disclosure.

3. If the above is true, then what is my best option to protect my product idea, but at the same time still be able to contact companies to see if they are interested in "licensing" my product without receiving a "bar to patent" after 1 year due to "public disclosure/sale offer"??

Thank you,

olimits7

The best protection is to file your application before you do anything else. If you can't get anyone interested in your invention in a year, you can always abandon the provisional and only be out the filing fees. Note that an NDA will not necessarily keep the one-year clock on the statutory bar from starting -- you will want to work with an attorney who has experience in this area to draft an NDA that would provide the protection you seek.

Best bet, as the other poster noted, is to simply file your provisional.

 

[olimits7]

Thank you for your replies...they are very helpful!

So it seems that "public disclose/offer to sale" is the most important thing I need to worry about since this starts the 1 year clock, and after this 1 year mark passes I won't be able to submit for a patent ever on this idea.

However, one question how does the USPTO ever find out that I "public disclosed/offer to sell" to a company within that year? Do I have to send them any emails that I have from contacting these companies?

I thought I read online that if a PPA expires WITHOUT "public disclosure/offer to sale" occurring that I could re-apply for a new PPA?

The best protection is to file your application before you do anything else. If you can't get anyone interested in your invention in a year, you can always abandon the provisional and only be out the filing fees. Note that an NDA will not necessarily keep the one-year clock on the statutory bar from starting -- you will want to work with an attorney who has experience in this area to draft an NDA that would provide the protection you seek.

Yes, I think this will be my best bet; to file a PPA and contact as many companies as possible within the year. If I can't get 1 company interested in my idea within 1 year; then I guess it doesn't make sense to spend $10K on pursuing an NPA.

But I also read that sometimes companies are only interested in patents that are issued. Due to even if I file an NPA this doesn't guarantee my patent will get issued, and also it could take up to 2-3 years before the patent does get issued and I don't think companies are that patient.

Your best bet if the idea is patentable is to get the PPA in and follow it up as soon as you can with a NPA. I'm not sure why you are screwing around risking losing your patent rights in the interim.

You're right, I would love to be able to submit an NPA but spending $10K on a patent and then finding out no company is interested in it will be a big slap in the face...haha!

Thanks again,

olimits7

 

[divgradcurl]

Thank you for your replies...they are very helpful!

So it seems that "public disclose/offer to sale" is the most important thing I need to worry about since this starts the 1 year clock, and after this 1 year mark passes I won't be able to submit for a patent ever on this idea.

However, one question how does the USPTO ever find out that I "public disclosed/offer to sell" to a company within that year? Do I have to send them any emails that I have from contacting these companies?

There are two ways the USPTO finds out. The first way is that you tell them, as you are required to, see 37 C.F.R. 1.56.

The second way is when you try and enforce your patent, and the other party finds out about the public use or disclosure (and they will find it), and then files for reexamination of your patent -- or, if you are in court when they find out, gets a judge to find that you withheld information from the USPTO, and orders your patent unenforceable.

I thought I read online that if a PPA expires WITHOUT "public disclosure/offer to sale" occurring that I could re-apply for a new PPA?

That is correct, if there is no public disclosure. But you lose the earlier filing date of the original provisional as a priority date. A provisional cannot claim priority back to anything else.

Yes, I think this will be my best bet; to file a PPA and contact as many companies as possible within the year. If I can't get 1 company interested in my idea within 1 year; then I guess it doesn't make sense to spend $10K on pursuing an NPA.

But I also read that sometimes companies are only interested in patents that are issued. Due to even if I file an NPA this doesn't guarantee my patent will get issued, and also it could take up to 2-3 years before the patent does get issued and I don't think companies are that patient.

Nobody can tell you what you should or should not do. If you don't file for a patent, someone else might. And no company is going to want to spend a lot of money on an idea that can't be protected, or worse, is patented by someone else.

You're right, I would love to be able to submit an NPA but spending $10K on a patent and then finding out no company is interested in it will be a big slap in the face...haha!

Thanks again,

olimits7

Sometimes you have to take a risk to reap the rewards.

 

[olimits7]

Nobody can tell you what you should or should not do. If you don't file for a patent, someone else might. And no company is going to want to spend a lot of money on an idea that can't be protected, or worse, is patented by someone else.

That's true...I think I'll go with the PPA route and contact as many companies as I can within my 1 year of "public disclosure/offer to sale". Then if I see that companies are interested in my product idea; I will then apply for an NPA this way I can move forward towards getting my patent issued.

Sometimes you have to take a risk to reap the rewards.

Very true!!

Thank you,

olimits7