I could be wrong, but there seems to be qualification here. If we include the [...] part from above, it reads:
"Beware that an applicant whose invention is "in use" or "on sale" (see 35 U.S.C. =A7102(b)) in the United States during the 12 month provisional-application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional- application pendency period expires before a corresponding non- provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. =A7102(b)). "
Reading the actual clause at 35 U.S.C. =A7102(b)):
"the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or"
This implies that, if there is public sale within the United States, the applicant has 1 year to file, certainly within the United State without risk of loss of protection [theoretically of course - a thief will steal no matter what the law says], but also in foreign countries.
When I first studied the patent process 20 years ago, it seemed that most countries besides the USA forced the inventor to follow a patent- now/disclose-later sequence, whereas USA has always allowed one-year grace period after intentional or unintentional disclosure of idea.
It could be the case the this disparity has been resolved, where now, the 1-year grace period extends essentially internationally. The qualification above certainly implies that this is the case.
The gist is that a provisional application (PPA) counts as a public disclosure, which starts the one-year timer. If you don't follow with a regular patent application (RPA) within that year, the thing's been published worldwide (the USPTO publishes PPAs), is public domain, and not patentable.
Ditto if you've offered the thing for sale during the pendency of the PPA.
Sometimes, if you're not sure, it's better just to keep things under your hat.
You can preserve many of your rights (and secrets) just keeping proper records, properly witnessed, etc.
These are US rules; I don't remember the Patent Cooperation Treaty details--I'm rusty--but it's my vague impression that Europe has no one-year grace period--the moment it's disclosed, patent rights are lost, AIUI.
Are you saying that the provisional application itself counts as a disclosure? I do not think this is the case at all. The USPTO keeps the provisional application secret, just as it would keep a real application secret.
This is true.
I remember the same, though there was Paris Covnention thing of reciprocity, where if you actually had a USA patent file date, most countries following the accord would reciprocate.
I do not think this is the case at all. The USPTO keeps
Not true. Since 2000, both are published:
"Publication of patent applications is required by the American Inventors Protection Act of 1999 for most plant and utility patent applications filed on or after November 29, 2000."
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I vaguely remember signing the stuff, but I thought they didn't go through with the application. At any rate, nobody bothered to tell me when it was granted.
Well, of course, a "real" patent application eventually becomes public, which is consistent with the spirit of the patent process. However, a provisional application will not be exposed by the USPTO. The USPTO will keep the application secret during the 12-month pending period, and since conversion or application for "real" patent must occur within that period, the application for provisional patent ultimately remains secret, though it can be referenced by the "real" application.
I talked to someone at USPTO today, and they said,
"Technically, you have 12 months during which the provisional patent remains in effect, but off-the-record, we keep the provisional application for another 2-months, just in-case something weird happens is our fault. If the provisional period expires and nothing weird happened, we destroy the application and do not publish it."
I read the law, and provisional patents /do/ get different treatment. RPAs are published (37 CFR § 1.211(a)), but PPAs aren't (37 CFR §
1.211(b)). I personally had a contrary experience, but I think it must've been specific to that situation.
You were extremely lucky to get through to someone good--I've mostly only ever gotten the very worst sorts of idiots.
So I'm now not sure why they had that warning I quoted. I guess they're just stressing that filing a PPA doesn't stop the
35 U.S.C. 102(b) one-year time limit for filing after public disclosure or offer for sale, and that if you've made such a disclosure or sale during the PPA's pendency you'd best go ahead with an RPA, or lose your rights.
According to my fave text, if you file a PPA you _must_ file foreign applications within one year of the PPA filing; that term is NOT extended if/when you file a US RPA.
So, the PPA is a useful tool, with a few caveats.
In researching this post I learned that the RPA need not use the PPA's same specification, as long as the PPA teaches the claimed subject matter. Gee, that would've been handy...
Are you the same guy who's doing the video blog, or have I got the wrong Dave?
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Just wanted to share what little I have learned about the patent process over the past week. Obviously, I am not a patent attorney, so standard disclaimer applies...
Let us suppose that you have been working on the NBT (Next Big Thing) for a long time, and you're finished with it and ready to sell it, but there are 25 patentable ideas represented by it (because it's Big).
At a typical cost of $10,000 just for the filing, excluding prosecution, which is the dance that attorney does wiith examiner when claims are rejected/etc., you're looking at $250,000. Plus, you might not be able to wait the 18-months-to-5-years to get the patents.
The people at the USPTO have considered this dilema ad nauseum, and arrived at the Provisional Patent program:
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I will not regurgitate the rules here. You can read them on link above. What I will say is that, if you have $110US, and you are confident that your NBT will give you financial leverage within 12 months after release, you will be in a good position.
You would take your ideas, no matter how many, and describe them in sufficient detail to satisfy USC 35 Section 112 "to allow someone skilled in the art to be able to produce, yada..". It does not matter if your document is 800 pages long, but it must contain diagrams or it will be rejected. You also must pay $135 for each 50 sheets beyond the first 100 sheets, so 800 sheets would cost total of $110US + 7*$135US. Add a standard coversheet, $110US fee, and postcard if you are impatient. Send this to USPTO. The receiving office (RO) will open packet, see the postcard and know that you are impatient, note the date of reception, stamp it with USPTO seal, and send you the back, at which point you can claim Patent Pending status and start selling your product(s). The Provisional Patent application will be tucked away for
12 months, during which you must either convert it to a non- provisional application, or file separate non-prov (typical) application and reference the prov application in the non-prov application. You can also file electronically.
Of course, if you do not file within this 12-month period, the USPTO destroys the prov application. If you have been selling product during this time, and you do not follow through with non-prov application, you will have violated the no-disclosure rule for all countries besides USA. So you had better be sure 12 months is enough if you expose your products by selling.
When you file non-prov application, and reference prov application, it will likely happen that you have violated restriction on election of species:
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...which says that you cannot be greedy and try to squeeze multiple distinct ideas into one non-prov application. That's OK. The people at the USPTO are quite aware that this inventors do squeeze many ideas into a prov application, and they will NOT penalize you with the prov application if you do this, because in fact, they do not even examine the prov application until it is referenced by a non-prov application, at which point, the examiner will simply tell you to "chop it up".
What does this all mean? It means that if you have a system-oriented idea, one that has potentially disruptive market appeal, but contains a plethora of patentable subsystems (like Goddard's jet engine), too many for you to afford (say 10), you have an option:
Pay $110, sell your product, and find the remaining $99,890 in 12 months on merit of your idea.
On the matter of international patents:
There is the Patent Cooperation Treaty [PCT]:
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As you know, inventors all over the world got tired of getting ripped off by people whom they could not choke for the large body of water (or border fence) separating them. Enter the PCT. Countries agreed to following the Golden Rule:
"I shall not let mine citizens steal from yours if you will not let yours steal from mine."
Before the Provisioinal Patent program, there was no recourse. Exposure in the USA without a patent meant the automatic surrender of all rights in non-USA countries, despite the 1-year grace period in the USA after exposure, which, btw, is still in effect. But with prov application, situation is just too cool!!!: The non-prov gives right to file a PCT application ($4000US+) within 18 months, with the protection afforded by having made claim with USPTO. Then one simply files in each country individually. Most countries honor the PCT.
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