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Re: Extra Provisionals

Postby pending » Thu Nov 18, 2010 8:51 am

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Testing of a publicated project can last for up to at least six years, IAW common law. The invention need not change at all during that period.


Could this be explained a bit more?

Re: Extra Provisionals

Postby Scrupulous » Thu Nov 18, 2010 10:58 am

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Yeah, that was a case where a project was undergoing testing for a period of six years, before a patent was filed. The point being, a project can be tested for years after it has been reduced to practice, but before the patent term begins. That's true even if the testing is conducted publicly. In effect, that can be similar to your concern. And, it can be argued that it ultimately benefits the economy.

In your case though, once the product goes on sale, then yes, it starts the one year clock. But up to that time, you can file the exact same provisional a hundred times if you like. There is no law against it. There is nothing fraudulent about it. There is no inherently deceptive intent, no false marking. You would only be able to maintain priority to the lattermost 12 months.

FYI, you could also do this with regular applications, which can each be pending for several years, provided that they don't get published. Although, regular applications would be more expensive for what you're considering.
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Re: Extra Provisionals

Postby pending » Fri Nov 19, 2010 9:32 am

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Well this looks promising. I already have the building instructions/diagrams posted online for people to build it themselves, so I'll just submit those as the PPA, and mark the the product "patent pending" when sales start in January, and then re-file the same app annually thereafter.

It's interesting how, if the item is not for sale but is just testing publicly, that a patent term (w/priority date) can be obtained at all, since it is disclosed. Or maybe you mean just in the U.S.

Re: Extra Provisionals

Postby Scrupulous » Fri Nov 19, 2010 11:48 am

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pending wrote:Well this looks promising. I already have the building instructions/diagrams posted online for people to build it themselves, so I'll just submit those as the PPA, and mark the the product "patent pending" when sales start in January, and then re-file the same app annually thereafter.

It's interesting how, if the item is not for sale but is just testing publicly, that a patent term (w/priority date) can be obtained at all, since it is disclosed. Or maybe you mean just in the U.S.


Uhh, yeah it's just in the US and only if the testing per se doesn't reveal the claimed features.

The instructions/diagrams you mention would have triggered the one-year grace period the day they were published, though, unless they did not fully read on the claims of the invention you later apply for. However, an issue of obviousness may come up, based on any publication (including your own) that occurred more than a year before any priority date you intend to maintain.
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Re: Extra Provisionals

Postby pending » Sat Nov 20, 2010 8:41 am

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Ok, so to make sure I have it clear:

1. File PPA in December.
2. Mark product "patent pending"
3. Start selling in January, both U.S. and Foreign.
4. Re-file same exact PPA every December.
5. Product and "patent pending" mark can remain unchanged "forever".

This of course assumes:

1. No patent is desired.
2. No priority date is needed.

Thanks again.

Re: Extra Provisionals

Postby Scrupulous » Sun Nov 21, 2010 12:38 pm

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Again, I don't believe other countries honor a US patent pending mark.

Other than that, sounds like a winner.
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Re: Extra Provisionals

Postby Let-Them-Fly » Sat Nov 27, 2010 6:21 am

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As related to this topic, this morning I received the following in a USPTO newsletter:

Providing Inventors More Time and Options

Independent inventors have used provisional patent applications for various purposes—to test the marketplace, attempt to gain financial backing, secure licensing agreements, and to further their product development. However, many independent inventors have indicated that they would benefit from an extension of the provisional period for at least another year beyond the one year currently provided-for by law for provisional patent filings. The reasons most often cited by inventors are that one year is just not sufficient time to find financial help, evaluate a product’s worth in the marketplace or to completely develop the invention for commercialization.

After hearing these concerns from many inventors across the country, the USPTO took a look at whether it can extend the current one-year requirement for converting a provisional application into a regular, non-provisional filing. While the current one-year requirement provided by law can only be amended by Congress, the USPTO has found it could achieve the essence of the request by changing our “missing parts” practice to provide for an additional 12 months to perfect a non-provisional patent application. This would serve as a vehicle for inventors, at their option, to effectively have up to 24 months to make decisions regarding the significant investment of time and money required to take a regular (non-provisional) patent application forward.

Earlier this year, we asked for public comments on the proposed change that would provide 12 additional months to pay the search and examination fees in a non-provisional application. The USPTO received a large number of comments in response to this proposal. While most independent inventors approved of the proposed changes, some individuals and businesses voiced concerns and offered constructive comments. The USPTO has taken these comments into consideration and has been working on appropriate modifications to our original proposal. We expect to issue a notice shortly, inaugurating a pilot to implement this new practice.

It is important to understand how the 12 month extension pilot will work. In order to take advantage of the additional 12 months to pay the search and examination fees in a non-provisional application, an applicant/inventor must file a non-provisional application no later than 12 months after the filing date of the provisional application, and request a delay in payment of the search and examination fees at the same time the non-provisional application is filed. The USPTO is providing applicants with a form for the certification required, and to request a delay in payment of the search and examination fees (PTO/SB/421).

The non-provisional application disclosure requirements would have to be met in order to receive a filing date and enter the 12-month extension period. That means the non-provisional application for which a 12-month extension is requested would have to have a written description that clearly describes the invention so that someone with ordinary skill in the same technology can make and use the invention. It would also have to contain at least one claim, and drawings, when necessary, to understand the invention. The applicant/inventor would then also pay the filing fee, but not the search and examination fees. The USPTO would then respond with a Notice of Missing Parts, allowing 12 months to pay the search and examination fees.

It is critical to remember that the pilot program would not change the requirement that an applicant must file a non-provisional application, foreign, or PCT application within 12 months of the filing date of a provisional application. If a non-provisional application, foreign, or PCT application is filed later than 12 months from the filing date of a provisional application, it may not be entitled to the benefit of right of priority to the provisional application. However, as described above, the new pilot will enable electing applicants to delay other application-related expenses for an additional 12 months.

Again, we expect to move forward with this pilot program in the near future. To gain a better understanding of the utility of this new practice, the USPTO will be conducting at least one webinar in the near future and will have training packages available on the USPTO website (www.uspto.gov). In addition, independent inventors can contact the Inventors Assistance Center at 800-786-9199 with questions.

by David Kappos : Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

Link to article:
http://www.uspto.gov/inventors/independ ... /cover.jsp
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