What is the name of your state? CA
Greetings,
I have conflicting advice from 3 patent attorneys that I hope this forum will offer some guidance. It revolves around the issue of disclosure outside the US and timeframes allowed to file in the US. I basically want to file the same patent in the US without changing the product in anyway. But as you read below, there appears to be some divergence. I'm hoping your responses will help point me one way or the other.
Background:
A products first sales in the UK occurred May 2004, and a UK design patent was filed November 2004. The product was shown on a web site May 2005.
Advice #1 - from 1 patent attorney.
The "public use" and "on-sale" bars apply only to activities that occurred in the US, therefore, these activities in the UK do not directly bar the US patent. The fact that the UK inventor applied for the design patent in the UK more than 1 year ago is the critical detail, but will not bar the patent so long as (1) the application has not be published and (2) the patent has not issued.
The net of all this is that any current sales or marketing activity in the US would start the running of a 1 year period, but that period may be cut short if the UK design patent issues - that becomes the critical detail. This attorney quotes this portion of text below to help me understand this point:
-----------------------------------------
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,
-----------------------------------------
Advice #2 - from 2 patent attorneys.
Their responses boil down to the fact that because the first public sale in the UK happened in May 2004, then that DOES constitutes disclosure, and so ANY commercial disclosure outside of the UK DOES apply to the US - and so in my case, bars me from filing the same design patent in the US.
Greetings,
I have conflicting advice from 3 patent attorneys that I hope this forum will offer some guidance. It revolves around the issue of disclosure outside the US and timeframes allowed to file in the US. I basically want to file the same patent in the US without changing the product in anyway. But as you read below, there appears to be some divergence. I'm hoping your responses will help point me one way or the other.
Background:
A products first sales in the UK occurred May 2004, and a UK design patent was filed November 2004. The product was shown on a web site May 2005.
Advice #1 - from 1 patent attorney.
The "public use" and "on-sale" bars apply only to activities that occurred in the US, therefore, these activities in the UK do not directly bar the US patent. The fact that the UK inventor applied for the design patent in the UK more than 1 year ago is the critical detail, but will not bar the patent so long as (1) the application has not be published and (2) the patent has not issued.
The net of all this is that any current sales or marketing activity in the US would start the running of a 1 year period, but that period may be cut short if the UK design patent issues - that becomes the critical detail. This attorney quotes this portion of text below to help me understand this point:
-----------------------------------------
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,
-----------------------------------------
Advice #2 - from 2 patent attorneys.
Their responses boil down to the fact that because the first public sale in the UK happened in May 2004, then that DOES constitutes disclosure, and so ANY commercial disclosure outside of the UK DOES apply to the US - and so in my case, bars me from filing the same design patent in the US.
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