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Five weeks ago, I disclosed my invention to a multi-national corporation (let's call it Company A) without any kind of NDA (they don't accept NDAs) in a conference call and email. I am worried that Company A will tell one of their hundred partner companies (Company B) about my invention, and Company B will patent my invention before me. (I was able to partner with Company A though.)

I talked to my attorney who said that I can still patent in the U.S. and some European countries, so I dished out $15k to get a non-provisional patent, which is still being drafted. But if Company B gets a provisional patent before I file my non-provisional patent, do I lose rights to my own invention?

I spent the last 10 months day and night building it, so I would really appreciate some clarity.

  • I'm just wondering... is the attorney you are paying $15k to work on your non-provisional, going to file a provisional right away to nail down a date? – JSH Oct 7 '14 at 19:09
  • In some countries, the mere fact that you disclosed an invention to a third party without NDA makes it semi-public and unpatentable. Even if you file first, company A could invalidate your patent if they can prove you disclosed it to them prior. I've read the USA have a grace period for that so you may be in luck, but for the European countries ... act fast! ... and in more general manner ... do not ever disclose something you may want to patent without an NDA. – Hoki Dec 4 '16 at 10:09
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In the United States, the system currently works on a first-to-file basis. It used to be first to invent, but that was hard to prove and maintain.

Because of that, you'll probably be out of luck if they file a provisional before you, and there will be no way for you to know until your application receives an office action (provisionals are kept secret by default, unlike non-provisional applications). Your best bet is just to, as you've said, get filed ASAP and hope they were slower.

Beyond that, it's just a matter of trying to invalidate their patent, and that could prove tricky.

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    That is really scary. First to file system? Dear God... Ok, what if my product is already completed and in the market... after they convert their provisional into utility, can they kick me out of the market even though I completed my product before they even created it? – arao6 Oct 5 '14 at 3:48
  • Also is there any way to contest if I get rejected because someone else filed for provisional but I am filing non-provisional? – arao6 Oct 5 '14 at 3:51
  • @arao6 it may or may not make a difference, because you'd have to prove that they got the idea from you, and that can be nontrivial, particularly since you didn't tell Company B directly. So, yes, you could challenge their application if you can prove that they got it from you, but that's only good as long as you can prove it. – Matthew Haugen Oct 5 '14 at 4:11
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    For something to be prior art in relation to particular application it needs to be public before the filing date of the application (or of the earliest priority date) – George White Oct 6 '14 at 2:54
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    In a first to invent world an interference proceeding is used to battle out who can prove the invented it first. In the first to file law we have a derivation proceeding. You can try to prove the person who filed first stole it from you. – George White Oct 6 '14 at 2:59
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Legally, they are not supposed to file a patent if the invention is not theirs. Part of a patent filing is a declaration that you are the inventor (signed under penalty of perjury).

But as George points out, the world is first to file now. Which means that if they file first, they would have superior rights to you.

That said, if they derived their filing from yours, you could challenge it in a "derivation proceeding" and claim that they effectively "stole" your invention. However, that is very difficult to prove, and time consuming too.

So your best bet is to quickly file a provisional application including all the data you disclosed to Company A, and then file a utility patent with all the details as soon as that is complete. The provisional filing should not cost you a lot in addition to the utility filing.

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If you are the first to file a patent, then don't worry too much. But if they filed a patent before you did, you got some uphill battle.

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