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Patents and Inventors

Postby tony.fulford » Sat Jan 05, 2008 1:26 pm

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You are most likely on this website because you are an inventor or you want to be an inventor. So first, what is an invention and what can be patented? The following is an excerpt from the United States Patent and Trademark Office (USPTO) at:

http://www.uspto.gov/web/offices/pac/do ... ml#whatpat

[i]What Can Be Patented

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,â€

First to Invent vs. First to File

Postby Ben Tex » Tue Apr 01, 2008 2:34 pm

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Tony,

I'm a novice inventor, with one invention idea so far. All my eggs are currently in that basket. As I've mentioned before, I conceived of the idea in 2002, but didn't officially begin pursuing it until July of 2005, with an invention company (a mistake in many ways, I've learned). But, the refinement of my idea at that time can be easily documented. Through them, a patent application was filed in January of 2006. I've just learned that a provisional patent application for a svery similar product was filed by another individual four days before my file date, and a non-provisional application was filed 364 days later.

Before I wave the white flag, I want to exhaust every opportunity to continue my pursuit. I've heard the U.S. looks at first to invent vs. first to file. In your experience, is this an issue worth pursuing, and if so how?

Thanks,

Ben Tex

Postby makeworldbetter » Tue Apr 01, 2008 4:40 pm

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Ben

You didn't tell me this part. (Or I didn't ask) Have you file a non-provisional application already?
If you haven't, you can't file it now since it's more than 12 months from your Jan 2006 filing date.

Re: First to Invent vs. First to File

Postby tony.fulford » Wed Apr 02, 2008 4:19 am

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Ben Tex

Ben Tex wrote:But, the refinement of my idea at that time can be easily documented. Through them, a patent application was filed in January of 2006. I've just learned that a provisional patent application for a svery similar product was filed by another individual four days before my file date, and a non-provisional application was filed 364 days later.

Before I wave the white flag, I want to exhaust every opportunity to continue my pursuit. I've heard the U.S. looks at first to invent vs. first to file. In your experience, is this an issue worth pursuing, and if so how?

If you have the idea properly documented and witnessed in your inventor's notebook and you have been actively pursuing your idea (due diligence), then you have first-to-invent rights.

You can file for a re-examination of the issued patent with the USPTO. You must have very strong documentation as first-to-invent to do this and have the patent overturned.

What is the status of your patent application?

Thanks,

Postby Ben Tex » Wed Apr 02, 2008 7:23 am

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Thanks for the information. I don't have an inventor's notebook, and can only really prove that I've been pursuing since June of 2005, which is when I took it to the invention company. I can also prove that I've been pursuing it pretty strongly since then.

If I understand correctly, filing for re-examination is an action I would take after/if his patent is issued, but not before, correct?

My patent is still pending. It was filed in January of 2006. I talked to the gentleman over the unit looking at it in January of this year, and he told me office action was still probably about a year away.

Postby tony.fulford » Wed Apr 02, 2008 8:16 am

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Ben Tex

Ben Tex wrote:If I understand correctly, filing for re-examination is an action I would take after/if his patent is issued, but not before, correct?


Correct, you can only ask for re-examination after the patent is issued.

Postby Ben Tex » Wed Apr 02, 2008 10:10 am

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Thanks again. Would it be accurate to say that, in the event two very similar applications are considered for approval, the uspto will strictly go by "first to file" in issuing the patent? Afterwards, it is up to an inventor to challenge based on "first to invent"? Or does uspto do any investigation regarding "first to invent" before it initially issues a patent when there are two similar applications?

Sorry to hammer you with so many questions, but this is the most intense patent learning experience I've had yet.

Thanks again,

Ben

Postby tony.fulford » Wed Apr 02, 2008 10:19 am

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Ben Tex

Or does uspto do any investigation regarding "first to invent" before it initially issues a patent when there are two similar applications?

USPTO looks for prior art, but I would think that is the limit of their first-to-invent research.

Postby Scrupulous » Wed Apr 02, 2008 11:27 am

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Ben Tex wrote:Thanks again. Would it be accurate to say that, in the event two very similar applications are considered for approval, the uspto will strictly go by "first to file" in issuing the patent? Afterwards, it is up to an inventor to challenge based on "first to invent"? Or does uspto do any investigation regarding "first to invent" before it initially issues a patent when there are two similar applications?

Sorry to hammer you with so many questions, but this is the most intense patent learning experience I've had yet.

Thanks again,

Ben


Sorry guys. I need to step in here...

Ben, you would not want to wait to initiate a re-examination. It's very expensive, and it's not necessary. (And I don't know what MWB is talking about.)

If you haven't already done so, you would absolutely want to trigger an interference between your application and the other. That's free, and it's the correct thing to do. The way to do that is this:

A) Enter an Information Disclosure Statement for U.S. Patent Documents for your case, which cites the other utility application (as well as its provisional).

B) Enter an IDS for Non-Patent Literature Documents, which cites anything you can find that was submitted to your invention companies etc. (as well as copies of receipt from them), and which shows evidence that you were in possession of your idea before the PPA filing date of the other.

Call me when it is done...

That is all.

Carry on.

Postby makeworldbetter » Wed Apr 02, 2008 11:54 am

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Just for the record.

I did not tell Ben to go re-exam. Tony did.

Now carry on.

cron