15 years ago I filed a provisional patent to establish myself as first in line to patent an idea for a novel internet business.

I then submitted the idea (my working notes and flowchart) to a leading internet incubator without an NDA to see if they would be interested in outright purchase or development.

They declined and after the 2000 bubble eventually folded. However the VP that I spoke with would go on to have a stellar career in and around this idea of mine and during his tenure as CEO of a very large web company the latter Co. was granted a patent for my idea from 1999.

In the week before I disclosed the idea (1999) I contacted a friend of a friend who was in a similar industry to get his opinion on what direction I should take vis-à-vis funding or selling the idea. I mention in the email that I was keen or excited about the upcoming phone conference with the incubator co. and I describe the idea in great working detail (beyond obvious) for his opinion, again without an NDA.

I have retained copies of two of these lengthy conversations with him.

Do I prove prior art?

The provisional expired and it's not really my question.

I am asking if the personal email dialogues I had with various individuals about the idea (strategies to go VC route or sell) can be considered as prior art? There were no NDA's and no confidential statements below the email signature. I spoke freely with these people to gain feedback/advice and trusted them because they were friends of friends.

It was an inventor's disclosure (Form 19-2), which I was told is no longer used by the US Patent Office but at that time was valid for 2 years. To my knowledge it was never published nor any record kept after expiry except for the copy that I hold.


2 Answers 2


15 years ago I filed a provisional patent to establish myself as first in line to patent an idea for a novel internet business.

What is the status of this application?. if this application was filed by you and was published and if it contains matter to destroy novelty than it can be used as prior art.

Regarding Mail being prior art MPEP 2128.1 states

Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986) (Starlight Archery argued that Carella’s patent claims to an archery sight were anticipated under pre-AIA 35 U.S.C. 102(a) by an advertisement in a Wisconsin Bow Hunter Association (WBHA) magazine and a WBHA mailer prepared prior to Carella’s filing date. However, there was no evidence as to when the mailer was received by any of the addressees. Plus, the magazine had not been mailed until 10 days after Carella’s filing date. The court held that since there was no proof that either the advertisement or mailer was accessible to any member of the public before the filing date there could be no rejection under pre-AIA 35 U.S.C. 102(a).).

Further MPEP 2128.02 states

A publication disseminated by mail is not prior art until it is received by at least one member of the public. Thus, a magazine or technical journal is effective as of the date when first person receives it, not the date it was mailed or sent to the publisher. In reSchlittler, 234 F.2d 882, 110 USPQ 304 (CCPA 1956).

Now its important to note that if your mail signature contains any confidentiality clause than it will not be called as public disclosure.

  • 2
    I think the relevant MPEP section here is 2128: "A reference is proven to be a 'printed publication' 'upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.' Email, unless posted to a mailing list or printed and displayed publicly probably doesn't qualify.
    – JDMc
    Mar 5, 2015 at 0:49
  • Yes emails are vry tricky to qualify as prior art. Mailing list is good option but bottom confidentiality clause of email can restrict it to qualify as prior art.
    – Pushpak
    Mar 5, 2015 at 2:39
  • Are there any cases or examples of email being used as prior art or evidence of public disclosure? Either in personal communication to external party, with no expectation of non-disclosure, or to a mailing list, etc.
    – sdot
    Aug 12, 2016 at 20:06

Personal communications do not qualify as Prior Art, as they are not publicly accessible.

However, the Form 19-2 that you signed is proof of inventorship at a particular time. If you additionally have proof of the e-mail correspondence, then you may have a case against the cited inventors and original assignee of the patent, under MPEP Chapter 0600.

The following rules might be of interest to you, as they might be represent viable options for pursuing legal action.

MPEP Section 602 Oaths and Declarations [R-11.2013], 602.01(b) Inventor’s Oath or Declaration in Application Filed Before September 16, 2012:

35 U.S.C. 115 (pre-AIA) Oath of applicant.

The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and shall state of what country he is a citizen.

37 C.F.R. 1.68 Declaration in lieu of oath.

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant's own knowledge are true and that all statements made on information and belief are believed to be true.

35 U.S.C. 25 Declaration in lieu of oath.

(b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001).

In an answer to an related question, non-confidential disclosures start a one year clock for filing. I'm not familiar with that section of the MPEP. Perhaps someone else could offer an explanation of that rule.

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