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Re: ASK THE EXPERT - LAWYER

Postby abacus » Sat May 23, 2009 2:36 pm

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There's something there,Bbaker,and it's been around long enough for it to be corrected,and hopefully Matt passed a judicious eye over it.
Good luck.Maybe see you around more.

Adam

Re: ASK THE EXPERT - LAWYER

Postby apapage » Tue Jun 23, 2009 6:43 pm

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I would not rely on the disclosure without the NDA not being a public disclosure. There is no bright line for whether or not the disclosure is public. Whether or not it is is determined based on the facts and circumstances. The impression that I got when I research this issue a while ago was that disclosure to even one person in the relevant field without an expectation of privacy can constitute a public disclosure. For example disclosing a cell phone improvement to Nokia without an NDA may be public. Whereas disclosing it to a few friends at a party will probably not be. Take a look at MPEP 2133.03(a) "Public Use" [R-5]. It provides many examples of what is and isn't. I think best practice is to have the NDA in place before you disclose. Remember also that foreign rights will likely be destroyed as well.

Re: ASK THE EXPERT - LAWYER

Postby Scrupulous » Thu Jun 25, 2009 9:19 am

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Good examples, apapage. And welcome.

Just to add...

Determining whether something could be considered publicized or "made public" with respect to US patent law is fairly simple:

1. If enabling information (for PHOSITA) has become available in a form that is [or can then be] visually captured, and [that form] has become available to any receiving party who would not immediately recognize some obligation to maintain reasonably diligent control over that information (even secrecy) on behalf of its originator (regardless of whether that receiving party acts upon the enabling information at all), then that enabling information can be considered public.

Telling your buddy all about an idea (one that could be easily documented under the circumstances surrounding the disclosure) and telling him (making him verbally agree) to keep it under his hat, would be considered "not made public" unless he goes and tells someone else without asking that 3rd party to keep it secret, for example. But, even if confidentiality agreements were made in writing, secret information can easily be made public, irretrievably.

2. The number of people who gain access to the enabling information has no bearing on whether it is considered public, in the eyes of US patent law. You can have 100,000 people at Microsoft fully knowledgeable of a secret project under employment agreement, and it would not be considered public. You can also spill the beans to a single individual, and eventually lose control of it to the "public" forever.

The term "made public" should not be confused with the term "in the public domain" though, when you're talking about IP rights. Making public the details that enable an invention can be just as powerful as a patent deed, with respect to current US patent laws. Eventually, you expect a successfully marketed product to become widely public. Publicizing a product, even before it is commercially available, can amount to establishing priority rights for free.

Re: ASK THE EXPERT - LAWYER

Postby PennyB » Fri Jun 26, 2009 4:45 pm

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The below link addresses some of your issues:

http://www.score.org/protect_your_trade_secrets.html

Regards,
Penny Ballou :D

Re: ASK THE EXPERT - LAWYER

Postby apapage » Fri Jun 26, 2009 7:22 pm

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Thanks for the welcome. Glad to be here.

Re: ASK THE EXPERT - LAWYER

Postby terrycan123 » Sat Jun 27, 2009 11:26 am

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All these posts are great.

We in the business of inventing must deal with legal issues.

Before you call a lawyer please feel free to call me.

Terry Cantwell 425-996-8611

I'm at my desk Monday through Friday from 10:00 AM to noon Pacific Time.

I might be able to help.
Massive success to you

Terry Cantwell

http://www.protect-new-idea.com

Re: ASK THE EXPERT - LAWYER

Postby Scrupulous » Sun Jun 28, 2009 2:12 pm

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Terry, you seem like you genuinely want to help inventors, from your own experience with prototyping, which can be a good thing.

But, we're trying to keep these topics from being a mess of unrelated posts. This thread is for legal aspects of inventing. Can you please explain how your previous post relates to expertise from a legal perspective? I mean, I'm sure you have valuable input, at least in certain areas. And I know how practical it can be to build a prototype before spending money or time on anything else.

So, if someone simply stopped reading this thread and called you, what would you tell them? And why wouldn't you say it here?

Pre First Office Action -- When to Market Idea?

Postby engr_scotty » Thu Nov 26, 2009 6:27 pm

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Hi, I'm new to the forum and have a question...

Got a note from the PTO that says the first office action will come in about 6 months. I have a prototype. Do you think it would be wise to start marketing the idea (licensing or sale of the patent) or wait until I get feedback on the first office action?

thanks,
Scotty

Re: ASK THE EXPERT - LAWYER

Postby apapage » Sat Nov 28, 2009 9:37 am

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Hi Scotty and welcome.

You can start marketing your invention as soon as your patent is filed unless you have some reason to wait. This would also be a good time to review the claims of your patent application to see if there are any changes, e.g., add claims, that you would like to make. If you wait till the first office action, it will slow prosecution and it may require additional fees.

Re: ASK THE EXPERT - LAWYER

Postby Derek Pater » Sat Nov 28, 2009 2:00 pm

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by apapage » 24 Jun 2009 11:43
I would not rely on the disclosure without the NDA not being a public disclosure. There is no bright line for whether or not the disclosure is public. Whether or not it is is determined based on the facts and circumstances. The impression that I got when I research this issue a while ago was that disclosure to even one person in the relevant field without an expectation of privacy can constitute a public disclosure. For example disclosing a cell phone improvement to Nokia without an NDA may be public. Whereas disclosing it to a few friends at a party will probably not be. Take a look at MPEP 2133.03(a) "Public Use" [R-5]. It provides many examples of what is and isn't. I think best practice is to have the NDA in place before you disclose. Remember also that foreign rights will likely be destroyed as well.A Papageorgiou
http://www.patentlawforinventors.com


I find this subject very interesting and also Mindset problem with Inventors caused by the Legal People, these are the issues that slow inventors down and get in the way and turn you into the paranoid Inventor, always worried about I.P issues, sometimes I say Mate take a cold shower for all I know your Invention is worth nothing and that is the truth (proven figures) 95% of the time.

There would be thousands of Patents in the different systems worldwide that have been either inevitably or deliberately made Public and these Patents have been approved and are working making money.

Yes I have read stories about large companies trying to break a Patents back, by looking for a prior to Patent lodgement Public disclosure! , it that likely to happen to you the Inventor NO!

This game is full to the brim of risk and that’s how you have to look at it, minimize your risk using a NDA "otherwise take some Risks" and move forward.
Some of this just seems so far from the realities of getting a License Agreement, it feels like I am running a Mile race and everyone else is busy jumping the hurdles on the track, I just run on the outside edge.

Only jumping a few hurdles if really needed!

http://www.inventionsecrets.net
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