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The question relates to a patent with a current status of NOA, but not officially granted and not yet published. Specifically the context is disclosure of the application details and (in my case) a video demonstration, to patent marketing firms/agents for consideration of their interest in a marketing effort agreement. The concern assumes the perhaps unlikely scenario of dishonest persons in the chain of communication; nevertheless I would like to know the relative risk and any precedents for it. And is that risk really any different from when the patent is officially granted and published?

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  • Will you file a PCT or have you filed one?
    – DonQuiKong
    Apr 14, 2018 at 19:55
  • I have not filed a PCT. Expect to do so but haven't researched that process. (Advice welcomed.)
    – Charles
    Apr 15, 2018 at 0:56

1 Answer 1

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As I understood it, your question is if somebody could patent your invention in a non-US country after you showed it to them.

I'll assume your non provisional is validly filed but not yet published.

There are two risks.

One, improvements. Everyone knowing about your invention can file patent applications for improvements. If there is no NDA or similar provision, that's completly legal. For places like Europe, your patent application will count as prior art for non-obviousness/inventiveness only if the other application is filed after your application publishes.

In theory, if there is no NDA etc., you telling other people could count as a publication, but proving that and the exact content etc. ... So that's one risk.

The other one, somebody else filing the same (your) invention elswhere. Art. 54 EPC (Europe) as an example provides that a patent application may not be granted if the same invention has

  • been published or

  • the content of an ep patent application or a PCT designating EP (effectively from the filing date).

So your unpublished US aplication is not prior art for an EP application! If you file a PCT (designating EP) or EP application with valid priority to the US application, you can heal that. (Which is only possible up to 12 months after the first application, so if your application claimed pirority of a provisional, that's 12 months after the filing date of the provisional!)

I can't talk about all countries, so there might be some where even a PCT application is not enough, but it would at least enable you to get the older patent right. In Japan for example, a translation of the PCT application needs to be filed. There seem to be countries where the national phase needs to be entered for the application to be considered as prior art for novelty. So the risk of someone patenting your invention in other countries if you don't have the money to pursue the PCT application there exists.

That means, without an PCT (costs a lot of money),:

if you tell someone about your invention, they could file it somewhere else. That would be illegal, but it would be up to you to prove they stole it. Or at least that you publicly disclosed it, which would count as prior art.

To summ it up:

if you have the money and will and can still validly claim priority to the first application (yes, ppas count) to file a PCT and the priority holds because the first filing was well written -> improvement filings, but those can come after the normal publicaion anyways.

If any of those answers no -> there is a risk.

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  • "without a PCT: if you tell someone about your invention, they could file it somewhere else". Isn't that a risk even with a PCT if it's unpublished (other than EP)? That is, as far as I know, no other countries have comparable provisions to art 54(3) EPC. Unless I'm missing some nuance of your point, which is entirely possible.
    – Maca
    Apr 16, 2018 at 0:34
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    @Maca as fas as I know China (Art 22) and Japan (some supreme court decision concerning novelty) have similar provisions at least for national applications, and I thought PCT applications would count too if those countries are designated, but I'm not certain about that. I've edited the answer accordingly, though it leaves an open question there now.
    – DonQuiKong
    Apr 16, 2018 at 7:05
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    @Maca I did some more resach and I found that at least for JP PCT-applications need to be translated but then do count retrospectively. For the US apparently english pct applications count (?). So it's definitely not an easy "get them all" by filing a pct application.
    – DonQuiKong
    Apr 16, 2018 at 7:44
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    @Charles an nda helps against an disclosure being prior art. If someone steals your invention you can take their patent away with or without nda, but you need to prove it. So basically, imho, no, it doesn't help against that risk.
    – DonQuiKong
    Apr 21, 2018 at 18:22
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    But it's still recommended in many cases so they don't share your invention.
    – DonQuiKong
    Apr 21, 2018 at 18:23

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