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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 for a 17 page disclosure.
Opting for defensive disclosure will establish your invention as prior art thereby preventing others from patenting your invention. ...
6
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 date of filing (or priority date, whichever is earlier), unless an early publication is requested.
The patent application is published even if the patent is not ...
5
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.
5
Three part answer:
(1) Grace Period: The inventor's own pre-filing disclosure (or other disclosures stemming therefrom) will not invalidate the later-filed application so long as it is filed within the one-year deadline. This is true even when the disclosure is very public and without any claim-to-patent-rights made in the disclosure. One major caveat is ...
4
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 "predictable arts". Also, the implementation the inventor describes doesn't need to work particularly well. One way to think about it might be "is there more ...
4
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 that "information is generally to be regarded as having been made public if even just one single member of the public is in a position to gain access to it and ...
3
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. What conversations with other employees does impact is inventorship. If someone contributes an idea that gets reflected in a patent's claims, then they probably ...
3
A good option for you is to file a provisional patent. It costs a few hundred bucks ($250, or $125 for a "small entity") and can be as informal as you like. It could even be the exact same description you put on your Kickstarter page. However, note that whatever is in the provisional application limits what you can "claim priority to" later, so you want it ...
3
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 of the invention by the patentee exceeded one year prior to the filing (or priority) date.
After AIA, things aren't so clear; see below:
http://patentlyo.com/...
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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 and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional ...
3
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 ethics to keep information confidential unless you ask them. [US attorney]
In case of inventor, if dealing directly with Agent or Paralegal (non-law firm), he ...
3
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 the disclosure. Another requirement of patentability is that the invention has to be useful, in other words, the invention should be feasible to be made and ...
3
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 limited exclusive rights to their invention in exchange for detailed public disclosure of how it works. That is how we leave in place the incentives to invent (so ...
3
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 entirely on the content of the provisional it does not strictly need to go on the IDS since it would not technically be prior art. However, it might be a good idea ...
3
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 the inventor prior to the international filing date, it will add a note either in the Search Report itself or in the Written Opinion. Once you enter national/...
2
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 the time of filing for "non-publication request". This used to add $300 to the filing fee but that fee went away. Publishing has some benefits, it can give you ...
2
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 obligation for all patent attorneys to maintain the confidential of anyone’s invention under the law and they have to abide by the rules of law but in case of a ...
2
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: French Convention application ("FR1") claiming priority to US1 is filed.
US1 is filed before the disclosure. The disclosure is therefore not relevant for ...
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
...
2
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 date of filing a provisional, where the benefit of the provisional is validly claimed in a subsequent non-provisional) is less than 1 year after such a ...
2
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 of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art ...
2
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, there are no claims-specific fees. Another approach is to add pseudo claims in the description. I have seen lists of "Aspects of the Invention" written like ...
2
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 invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the ...
2
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 not on target the whole process is delayed and you may spend money later on an RCE.
Why does the law require it? Patent examination is considered a one party ...
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- 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 interested in the first part.
In simplest and briefest of terms, you are not recognized as an inventor for a particular patent application if it is not ...
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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 absolutely need to disclose both in your patent application. If however A is quite a reasonable invention by itself, and B is an independent invention (even if it ...
2
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 part of a best mode for A. If you had not yet developed B you could patent A and then develop a trade-secret B that made A more efficient. Since you already ...
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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 up such that it broadly defines the class of prior art and then carves out specific exceptions that can be used to disqualify references (publications or patent ...
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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 protects the content of the inventor's publications (during the 12 month period) from being used against them on a very literal basis. Anything from a third party ...
1
For patent attorneys and agents who you have engaged, any disclosures you make to them are confidential and privileged. They would not be able to make any of the matter public (at the risk of losing their licence to practice). You should therefore feel quite comfortable disclosing matter to your attorney/agent.
However, they would likely want to have ...
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