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New Patent Law May Destory the Independent American Inventor

Postby tony.fulford » Thu Jan 10, 2008 5:19 am

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Here is a link to my article that went out on the RSS feed for those that may have missed it:

http://inventorspot.com/articles/small_ ... ut_be_9759

--Tony a.k.a. the Inventor

Postby CriterionD » Thu Jan 10, 2008 4:03 pm

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This should be a topic for continual discussion IMO...

I am not aware that the new legislation will abolish provisional patent apps. From what I have gathered, it will just make them much more important. And it means the inventor must ivnest either in the time required to learn how to write a good enough provisional patent, or the services of an agent or attorney. The main difference is that with the new legislation, there is no one year grace period, or the importance of the grace period is changed.

It might be worth noting, the provisional patent app was not introduced by the USPTO to help inventors by giving them a cheap way to acheive a filing date. The provisional patent app was meant to be a tool that could be used by US companies (or inventors) who wanted to be on the same level as foreign applicants that could file an app in their own country to establish a priority date before filing their app in the US. It was never meant to be a tool used to accomlish cost advantages for anyone. To quote the USPTO's website:

Under the provisions of 35 U.S.C. § 119(e), the corresponding non-provisional application would benefit in three ways: (1) patentability would be evaluated as though filed on the earlier provisional application filing date, (2) the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date, and (3) the twenty-year patent term would be measured from the later non-provisional application filing date. Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term.


http://www.uspto.gov/web/offices/pac/provapp.htm

I am in favor of the USPTO instituting a inventor friendly version of the provisional patent app, or something to that extent, in the event our country switches to first to file. But anyways...

" Then, time will pass without the small inventor being able to prove they are practicing due-diligence."

This issue currently exists today when an inventor has not filed for patent protection or has filed a subpar provisional app. Its not affected by first to file unless it is true that provisional apps will be abandoned. And even in that case, many inventors that file subpar provisional apps based on common misconceptions wouldn't be affected.

"Sooner or later, the large corporations will stumble across the idea (even a blind hog roots an acorn every now and then) and end up patenting it before the small inventor."

This is still an issue today. Sure there's the one year grace period. But if an inventor relies on that or relies on a subpar provisional app, it will be up to them to prove "first to invent" and diligent pursuit in a court of law. Further, hypothetically under today's system, you can be the first to invent, show diligent process, file a patent app, and then a large company can file a patent app after you - and can still render your patent app useless if they can come up with enough evidence that they invented the product and showed diligent pursuit behind the scenes before you did. In fact, not only could they render your patent app useless, but this would render their patent protection as useful.

Sure, it doesn't happen much as far as I am aware, but thats because our country already on a certain level operates on a "first to file" basis in that "first to invent" is not often used in court to establish priority.

One thing a switch to first to file does accomplish, even if only slightly, is it lessens reliance on litigation and its equivalent. This is one of the main goals of the patent reform act which continues to be modified on an ongoing basis so that it can pass thru Congress (it was initially introduced as the Patent Reform Act of 2005 as noted by Wikipedia). This favors the poor inventor because litigation is where he/she faces the biggest disadvantage.

So - I do respect your experience, knowledge, and willingness to fight for invetors Tony - but I have to respectfully disagree a little bit on this subject. I look forward to further discussion on it, however. I think one thing everyone agrees on is that patent reform is needed. And I do agree that the patent reform act as it currently stands is imperfect, most particularly as it relates to a switch to "first to file."

Postby tony.fulford » Fri Jan 18, 2008 10:19 am

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CriterionD

A Provisional Application for Patent is a placeholder for a filing date (for a subsequent non-provisional filing) and IS NOT a patent application. It is unclear, at this point, how a provisional will be treated under the patent reform, nor do I think it will be clear until a court case is filed under the patent reform, if it passes.

You also referred several times to subpar provisional applications, the same holds true for subpar non-provisional applications. Provisional applications are free form and can, and should, meet most of the criteria (including claims) of a non-provisional.

Great to have your participation. Let's continue so others will join in!

Postby makeworldbetter » Fri Jan 18, 2008 10:42 am

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I think Provisional application is definitely one of factor when congress consider such a reform of moving to first to file system. It may be the compromised way for small inventors to get filing date priority with broke a pocket. I mean $105 filing fee, most people can afford it, right?
If they take away provisional and also move to first to file system, That would be a sad day for all small inventors.

Postby DannyB » Fri Jan 18, 2008 2:33 pm

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I can't remember where I read it, but I read somewhere that big corporations don't want the First to File system anymore than small inventors do because they too would have to file a Utility Application every time they came up with an idea. Their Research and Development people come up with many many ideas all the time that are just put into journals. With First to File that is the end of the journals and the beginning of a big expense to them.

If this is true, then you know that the big corporations will have an influence on whether this new law ever happens.
Last edited by DannyB on Sat Jan 19, 2008 1:40 pm, edited 1 time in total.

Postby tony.fulford » Sat Jan 19, 2008 6:47 am

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You are correct in your statement about many large corporations. The real issue is not independent inventors versus large corporations, but continued innovation. It is clear that more innovation occurs in an environment where ideas are encouraged rather than being stifled.

That is the reason that I think independent inventors should become professional inventors rather than trying to produce and take products to the market, i.e., license an idea and let the licensee pay for patent filing. Start collecting royalties and move on to the next idea.

Don't get bogged down in running a business; Stick to innovation!

Postby DannyB » Mon Jan 21, 2008 1:00 pm

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I have heard a couple of different angles as to what is best---a licensing agreement, where the licensee still owns and controls the application process, and an assignment agreement where the assignee controls the application process.

Are you getting licensing agreements early on, where the licensee pays for the licensing up front for a pre-agreed to licensing agreement, or are you getting an assignment agreement?

Postby tony.fulford » Mon Jan 21, 2008 1:17 pm

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The licensee and the assignee are the same. A Licensing Agreement is signed between the licensor (patent owner) and the licensee, a company wanting the patent. As part of the licensing agreement the licensor agrees to assign the patent to the licensee.

It is very similar to selling real estate, the licensee now literally owns the patent. Just be sure that performance and time-to-market are also addressed in the licensing agreement so the licensee does not sit on the patent and never takes a product to market.

Postby DannyB » Mon Jan 21, 2008 1:40 pm

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Tony, I worded that wrong. Where I said, "a licensing agreement, where the licensee still owns and controls the application process", I meant to say licensor still owns, instead of licensee.

I realize that assignee and licensee are the same person/company. I guess that I am looking at control issues.

I was wondering if some inventors were successful at getting companies to fund the inventor's application process up front for a pre-agreed to licensing agreement, should the Patent get issued. That is how I interpreted your previous post.

Postby tony.fulford » Mon Jan 21, 2008 2:01 pm

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DannyB wrote:I was wondering if some inventors were successful at getting companies to fund the inventor's application process up front for a pre-agreed to licensing agreement, should the Patent get issued. That is how I interpreted your previous post.


Yes, you can take an idea to a potential licensee and sign a licensing agreement that states the the licensee will pay for the patent application and patent maintenance fees. I, and others I know, have done this successfully.

The potential licensee is probably going to require that you sign a waiver, but that is just a risk of doing business without having a patent upfront. Most large respectable companies are not going to try to take advantage of you. You cannot make an assignment through the USPTO until a provisional or non-provisional application has been filed.
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