6 votes

Patent application as defensive disclosure

Regarding the first query, the patenting expenses in total (including professional fee) will be much higher than expenses involved in defensive disclosure. For example, IP.com charges about USD 225 ...
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  • 776
6 votes

Patent application as defensive disclosure

The answer is YES. A published patent application will act as a defensive disclosure (prior art) to any future patent application(s). A patent application gets published after 18 months from the ...
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  • 776
5 votes

Patent application as defensive disclosure

If you meet all the formal requirements the application will publish. I believe they have also eliminated the fee for requesting early publication so you don't need to wait 18 months.
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4 votes

"Undue experimentation" - why isn't the patent office more demanding to minimise it (e.g. provide parts list)?

The USPTO tries to follow the law and the rules. To show a person skilled in the art how to make and use an invention doesn't mean you need to give them production blueprints - especially in the "...
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  • 25.3k
4 votes

At what point do conversations become prior art?

This is a very interesting topic and a short answer is rather impossible. It's all about how you define the public and its access to prior art. The EPO (Europe, for the most part of it) considers ...
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3 votes

At what point do conversations become prior art?

I'm not a lawyer, but my understanding is that something has to be publicly disclosed to be considered prior art. Conversations between colleagues within the same business is clearly not prior art. ...
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  • 9,607
3 votes

Confidentiality in patents

It is the agreements and licensing arrangements that are confidential; not the patents. A "confidential patent" is almost an oxymoron. The idea of a patent is to allow an inventor to benefit from ...
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3 votes

Do I need NDA when talking to a patent professional?

Patent professional can be: Patent Agent Attorney Paralegal In case of Attorney and member of BAR, a person need not to go for confidentiality NDA agreement, as per law they are bound by the law and ...
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  • 2,115
3 votes

Sufficiency of disclosure for untested invention?

Enablement requirement of patentability requires one to describe the invention in a clear and complete manner such that a person skilled in the art would be able to perform the invention by referring ...
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3 votes
Accepted

Is it possible to obtain a patent on a technology I am already selling?

As far as I know, this scenario is not well-settled law in the U.S. Prior to the changes to patent law introduced by AIA, any patent would almost certainly have been invalid if secret commercial use ...
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  • 1,013
3 votes

Features not disclosed in provisional application priority date

You are correct. From MPEP 211.05 A: for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description ...
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  • 544
3 votes
Accepted

Do I have to disclose the infringement in the Information Disclosure Statement form?

If you file the non-provisional within the 1 year time after the provisional, then anything well described in the provisonal gets the date of the provisional. If the "infringing" product is based ...
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3 votes

Is registering for an invention fair considered as public disclosure?

The PCT does not have any "grace period", it leaves that to each Contracting State and the national patent law thereof. If the International Searching Authority finds a disclosure made by ...
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2 votes

Is it better to not to publish untill the patent is granted?

If you plan to file outside the U.S. you do not have a choice, the U.S. will publish 18 months after earliest claimed priority date. If you do not plan to file outside the U.S. you can check a box at ...
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2 votes

Can I file in france if I file a Provisional in the US and then publicly disclose prior to filing in France?

There should be no problem. Let's set out a timeline: 1 Sep 2014: US provisional ("US1") is filed. 15 Oct 2014: Public disclosure of material in the US provisional filing. 31 Aug 2015: ...
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  • 7,033
2 votes

Objecting granted Patent based on own e-mail correspondence as Prior art?

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 ...
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  • 2,115
2 votes
Accepted

Do I need NDA when talking to a patent professional?

It is recommended to have a NDA in place before you discuss your invention with a patent professional. A patent professional can either be an attorney OR a part of search firm. Normally, it is an ...
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2 votes
Accepted

If i publish my invention before i get a patent do i have a year to get a patent before i lose my rights?

Disclosures made by the inventor less than 1 year before the effective filing date is not prior art in the US (35 USC § 102(b)(1)). Accordingly, as long as the effective filing date (which can be the ...
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  • 7,033
2 votes
Accepted

method patent: sub-method dependency

Is it okay to show just one way of performing step C? Yes. The relevant law is provided by 35 USC § 112(a), which provides (emphasis added): The specification shall contain a written description ...
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  • 7,033
2 votes

Combination of dependent claims

One option is to file provisional in the US the same day as the nonprovisional with the claims exactly as you plan to have them in rest of the world and use it for priority. Since it is not examined, ...
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2 votes
Accepted

Emailing Patent Drafts to Attorney

35 U.S.C. 102 has the rules on public disclosures and are discussed in MPEP 2152. 35 U.S.C. 102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed ...
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  • 324
2 votes

Information Disclosure Statement

It advances the application process by fulfilling an important requirement on the applicant. It could also help the examiner in formulating a good first office action. If the first office action is ...
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  • 25.3k
2 votes
Accepted

Retaining inventorship of abandoned provisional patent of India (even if rights are foregone)

- to retain the inventorship - This has two aspects. Your claim to be an inventor (moral right) and ownership right to an invention. From your discourse, it appears you are more and probably only ...
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  • 1,204
2 votes

Is it possible for patents to have trade secrets?

Based on feedback, i'm editing my answer. You are obligated to disclose your invention's best embodiment in the patent application. Thus if A isn't really sufficient without B I'm guessing you ...
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  • 9,607
2 votes

Is it possible for patents to have trade secrets?

In the U.S. you need to include the "best mode" embodiment of your invention. You might be able to narrowly claim A such that a disclosure sufficient to enable A, alone, does not need to mention B as ...
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  • 25.3k
2 votes

Can independent 3rd party disclosures created during grace period after inventor disclosure be used against inventors after the grace period?

I'll try to clarify. Under the AIA first to file system, the effective filing date of the pending application is important for figuring out what is in the prior art. The law (35 USC 102) is now set ...
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  • 21
2 votes

Can independent 3rd party disclosures created during grace period after inventor disclosure be used against inventors after the grace period?

An answer to the question in your title is at How do others' publications during the grace period hinder patentability? As interpreted by the USPTO the provisions for a grace period in the AIA ...
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  • 25.3k
2 votes
Accepted

Is it possible to file for patents in Australia within 1 year of US patent publication?

I think you are mistaken about basic premise of patent application prosecution timeline. Australia, like any other PCT member countries or Paris Convention member countries, adheres to one year time ...
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  • 1,204
2 votes
Accepted

Is it a good idea to publish the white paper describing the technology right after filing patent application?

If you were to file another application claiming priority from the first patent application, and you were to further add new embodiments in that another application, then the publication of the white ...
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2 votes
Accepted

What are the consequences of demonstrating an invention in public before applying for a patent?

First, public demonstration that keeps the invention hidden - In most of the world the focus is on actual disclosure and a demonstration that didn’t expose the claimed invention would not break ...
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