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Would 'Patent Pending' Discourage YOU?

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I hear you -- really, I do.

BUT - I wouldn't actually be lying to the patent office. And I would have no problem listing all the prior art references - they won't read them anyway in a provisional app.

Lying literally means an intent to deceive, and I would in fact disclose the invention exactly as conceived.

I guess I'm saying -- Do not interpret my low expectation that a patent will ultimately grant as "lying". They are two very different things.

Curiously, the MPEP has a section on the Duty to Disclose which states.... (The following comes from MPEP 2001.005) Which I just found...

If information is not material, there is no duty to disclose the information to the Office. Thus, it is theoretically possible for applicants to draft claims and a specification to avoid a prima facie case of obviousness over a reference and then to be able to withhold the reference from the examiner. The Office believes that most applicants will wish to submit the information, however, even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality or that it may be held that there was an intent to deceive the Office.

That's interesting - (not particularly useful, but interesting). Also, keep in mind that a provisional app does not have Claims, so the majority of MPEP 2001 (i.e., Duty of Disclosure, Candor, and Good Faith - which refer to the Claims) does not even apply.

There's another section in the MPEP that deals with apps they receive that are utterly incomprehensible. They just have some form language to reject the App in its entirety and move on. The key, even in those cases, is that the Applicant can rightfully claim "patent pending" while the application is being prosecuted. Even if it is gibberish.

Do you see my point?

Reply to
mpm
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"Patent Pending" tells you that the idea is possibly worth stealing. And thus has the EXACT OPPOSITE of its intended effect.

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Many thanks,

Don Lancaster                          voice phone: (928)428-4073
Synergetics   3860 West First Street   Box 809 Thatcher, AZ 85552
rss: http://www.tinaja.com/whtnu.xml   email: don@tinaja.com

Please visit my GURU's LAIR web site at http://www.tinaja.com
Reply to
Don Lancaster

There's daylight between knowing about blocking prior art and knowingly trying to patent someone else's invention. You do have to tell the USPTO about prior art you know about, but obviousness is a gray area.

Since KSR v Teleflex it's got less gray, which is good.

Cheers

Phil Hobbs

--
Dr Philip C D Hobbs
Principal
ElectroOptical Innovations
55 Orchard Rd
Briarcliff Manor NY 10510
845-480-2058

email: hobbs (atsign) electrooptical (period) net
http://electrooptical.net
Reply to
Phil Hobbs

In this day and age, there ALWAYS is prior art. Guaranteed.

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-- Many thanks,

Don Lancaster voice phone: (928)428-4073 Synergetics 3860 West First Street Box 809 Thatcher, AZ 85552 rss:

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email: snipped-for-privacy@tinaja.com

Please visit my GURU's LAIR web site at

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Reply to
Don Lancaster

There supposedly is a city in Japan called Usa.

--
Many thanks,

Don Lancaster                          voice phone: (928)428-4073
Synergetics   3860 West First Street   Box 809 Thatcher, AZ 85552
rss: http://www.tinaja.com/whtnu.xml   email: don@tinaja.com

Please visit my GURU's LAIR web site at http://www.tinaja.com
Reply to
Don Lancaster

No.

Pissing around with patents is a futile waste of time, energy, and sanity.

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--
Many thanks,

Don Lancaster                          voice phone: (928)428-4073
Synergetics   3860 West First Street   Box 809 Thatcher, AZ 85552
rss: http://www.tinaja.com/whtnu.xml   email: don@tinaja.com

Please visit my GURU's LAIR web site at http://www.tinaja.com
Reply to
Don Lancaster

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one: (928)428-4073

You keep saying that, yet we're making loads of money on them... The one in process now** will (should? hopefully?) make the others look like chump change.

** the utility patent, not the one that is the topic of this thread

I've been to your web site. What happened? What soured you on patents so much? Did you ever read The Black Swan, by Taleb? Every now and then (no matter the discipline) you get a winner that makes all the other failures meaningless. (And, we do have 19 of those!) Maybe you just gave up too quickly? I'm just sayin'...

Reply to
mpm

Depends. Good luck getting venture funding without them.

Cheers

Phil Hobbs

--
Dr Philip C D Hobbs
Principal
ElectroOptical Innovations
55 Orchard Rd
Briarcliff Manor NY 10510
845-480-2058

email: hobbs (atsign) electrooptical (period) net
http://electrooptical.net
Reply to
Phil Hobbs

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I hear you, but I don't think your statement is technically accurate.

Before getting into that, I just want to resognize that this thread has drifted, unexpectedly, from a question about deterrence language, to one of a likely loophole in patent procedures.

For a provisional patent application, you DO NOT have to disclose to the USPTO ANY prior art, blocking or otherwise - it is NOT required for a provisional app. Likewise, obviousness doesn't even come into issue for at least two reasons:

1 - A provisional application need not have any Claims (therefore, there is nothing to be deemed "obvious") 2 - A provisional application is never prosecuted, therefore, there is no possibility of an objection as to obviousness being raised. (or for that matter, an objection relating to utility, or novelty, or even an objection related to non-patentable matter, such as perpetual motion machines, or nuclear secrets, etc...) Provisional applications are never published.

KSR and Teleflex, which merely returns an obviousness determination to the factual anaylsis underlying the Graham factors, and has absolutely nothing to do with provisional patent applications. They DO APPLY to non-provisional applications, however, including those that may claim the earlier filing date of the provisional.

In short, this "patent-pending" thing seems to be a loophole in the law. Period.

If you want to blow $100 to stamp "patent-pending" on an article, or use it in your advertising, there appears to be NOTHING to stop you -- even if you attempt to identically patent an existing product! Now, you may end up in court on an infringment case, or whatever civil action comes your way - but the USPTO appears not to care in the slightest about ANY of that.

It's facinating (to me), and I never would have even though about this outside today's thread, but it sure looks right from everything I've read online thus far...

Pay your money - claim "patent-pending" status. Which is, as long as your payment clears, is absolutely accurate (the patent actually IS pending), and it is entirely your right to say so, without fear of violating the law. Note: There is indeed a law that prohibits the use of the term "patent pending" if no application is actually pending. No argument there!

Reply to
mpm

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I think you are correct about the USPTO not publishing the application, though I know in the EU, the application is public.

Since most patents are shit, I wouldn't be deterred by patent pending. I would be more deterred by having to spend money to compete with an established product. The person that is out there first generally makes the real money. Well with the exception of Xerox PARC. ;-)

Remember, a patent is worthless unless it is defended. Don't even get me started on software patents.

Reply to
miso

ty.

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Just to add - with this little idea, I obviously won't bother with outside capital. It's really just a matter of whether I want to blow $100 to be able to legally say "patent-pending". Based on opinions thus far, the jury is out as to whether those words are a deterrent or an invitation.

And, like I said, it's very niche anyway.

Reply to
mpm

a

one: (928)428-4073

I don't think that is true anymore, but there was a big stink about stuff labels "Made in Usa". You can stamp "Made in USA" if it is made in any US possession such as Saipan.

Reply to
miso

Hide quoted text -

I wasn't really talking about provisionals, and I don't think James was either...all a provisional is is the specification, so you aren't actually asserting ownership of anything at that point.

Cheers

Phil Hobbs

--
Dr Philip C D Hobbs
Principal
ElectroOptical Innovations
55 Orchard Rd
Briarcliff Manor NY 10510
845-480-2058

email: hobbs (atsign) electrooptical (period) net
http://electrooptical.net
Reply to
Phil Hobbs

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Yes, as someone else pointed out, USPTO law got much more restrictive after KSR & Teleflex (i.e., fewer junk patents, fewer business process patents). For this niche idea, I definitely would not file a non-provisional app. No way. Total waste of money since it would never grant. And if by some miracle it did grant, it would be extremely easy to hold it invalid in a competent court.

Here in the US, the USPTO will publish NON-provisional utility applications 18-months after filing. Provisional apps are not published -- but then, they can never turn into patents either.

Thatnks for the insight!

-mpm

Reply to
mpm

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Oh, I see. This whole thread is about provisionals.

If a non-provisional, absolutely, the inventor inures an obligation to disclose relevant prior art. However, they are not (technically) required to search for it. Ignorance is bliss, I guess?

But then, it's hard to know what you invented (if you don't look at others' claims), and you may leave juicy scraps on the table!

Reply to
mpm

nethttp://electrooptical..net-Hide quoted text -

Hide quoted text -

What are you, nuts? This is SED, where we never stay on topic for more than about ten posts.

Some companies actively discourage their folks from doing searches, just to avoid that liability.

Claim drafting is key--that's where most patents are weakest, because the lawyers are often lazy or unimaginative, and just write the easy thing, which is usually so narrow that avoiding it is trivial.

A friend of mine is a gifted patent lawyer at IBM who I've been totally unsuccessful in persuading to moonlight. ;) He's the most amazing claim-drafter I've ever met--he figures out wording that avoids all the prior art but also manages to occupy all the nearby white space.

In 38 patents, I've only had really bad blocking prior art come up once--and it turned out that my filing date was earlier!

This was the basic patent on the antenna coupled tunnel junction detector and modulator for optical communications, so I cared a lot about it--but the delays are so long in that field that the other guy's patent came out first even though my filing date was earlier. If that ever gets into commercial use, it'll make for a very entertaining lawsuit between IBM and the University of Colorado.

Cheers

Phil Hobbs

--
Dr Philip C D Hobbs
Principal
ElectroOptical Innovations
55 Orchard Rd
Briarcliff Manor NY 10510
845-480-2058

email: hobbs (atsign) electrooptical (period) net
http://electrooptical.net
Reply to
Phil Hobbs

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It applies. Standard declaration for a regular patent application: "I understand that 18 USC 1001 says you'll come and get me if I lie."

Yes. It's pretty hard to enforce anyhow--they'd have to prove you lied. They'd have a hard time showing you didn't believe in your invention, unless you, say, posted on USENET to the contrary. Then it'd be a slam-dunk.

sional_app.htm

That's a good point. Without a sworn declaration you're probably safe from prosecution, though your reputation may not be.

Lots and lots of successful products--most of them--are made and have been made through the ages without patents. (Mostly in China these days, but that's another story...)

-- Cheers, James Arthur

Reply to
dagmargoodboat

[...]

I suppose it depends on exactly why mpm thinks his thing "will never qualify for a patent." Apparently _mpm_ thinks it's either been done (prior art), or it's an obvious step from something that's been done. He might have another reason, I don't know.

-- Cheers, James Arthur

Reply to
dagmargoodboat

ty.

True. I've been looking at some open-source hardware true-believers. They think ideas are communal property, to be shared with the world, and that giving ideas away makes them more accessible.

Thing is, if everyone else has your idea, then all you can do is compete on price, with pricing so low you can't pay your rent. Whatever it is you'd like to make, someone else--with your source documents!--can make it cheaper in China.

I think it makes things less accessible, at least innovative things.

-- Cheers, James Arthur

Reply to
dagmargoodboat

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visional_app.htm

No argument on the Chinese thing. It's pretty clear they have a low regard for international patent law.

Not to beat a dead horse - but I still don't believe the comment on

18USC applies. (?) First, I'm not lying, I just have an extremely low expectation of getting a patent. Let's clear that up front.

BUT - EVEN IF I WERE LYING, I WOULD STILL BE ENTITIELD TO SAY "PATENT- PENDING" IF I FILED A RELEVENT PROVISIONAL PATENT APPLICATION.

Period. End of story.

For that matter, I could write a note in the margin that the entire provisional application was bogus - and by USPTO's own admission - THEY WON'T EVEN READ the provisional patent application. I think it is quite simply: Pay your $100 provision patent fee, use "patent-pending" for (at least) a year. Longer, if you decide to file a non-provisional application.

I am as surprised as anyone by this revelation (if in fact it is true).!!?

And honestly, I never would have even thought about it, as I don't think I've ever been in a position where an actual patent wasn't the objective. Patent-pending is. But I've looked all over CyberSpace today and I can't find a single reference that says you can't do it. The reference you provided earlier does not preclude the behavior. For all I know, this happens all the time???

Now, if the provisional app was so bogus as to describe some other product (or no product at all) - i.e., not the one you intend to affix "patent-pending" to, then you're probably in trouble. But for a different reason, of course. Affixing patent-pending when no app is on file to back that particular item.

Maybe there is a prohibition out there, but I have yet to find it -- and with a dilligent search. Maybe the FTC has a rule, but I would think it would be at USPTO?

Now of course, having said all that, and some 30-posts later, it still isn't clear that there's really any advantage to saying "patent- pending". The best course (for something this niche) still seems to be, strike first, win, then leave the game.

--
As a side note, I learned something else interesting today that I can
share with the group...

We've all seen the language:  "This [widget] is protected by one of
more of...." and then it goes on to list dozens of patents, etc...
Companies often list all these patents in the hope that it increases
the liklihood that at least one of their patent claims can survive an
infringement suit, particularly when product lines overlap or features
start to blur between products.

Well, a recent Federal Appeals court has determined that each patent
so listed must now have at least one claim that actually protects the
product in question. Otherwise, the entire listing can be ignored by
the courts, and without notice to would-be infringers, it's much more
difficult to collect damages.

Good for them!!  I don't like mouseprint anyway!  :)
Reply to
mpm

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