From what I understand something cannot be patented if you have already sold one. I was wondering if you could charge a security deposit and loan it out for x period of time while waiting on your patent?
The on-sale bar is closely related to public disclosure. So playing games like loaning it out instead of selling it doesn’t mean anything.
The US is relatively recently (2013 America Invents Act) a first to file country. So the important thing is to have your patent application on file with the Patent Office before doing anything like publicly disclosing, selling, offering to sell, etc.
One other wrinkle is that the US has a one year grace period to file after public disclosure that has been found in case law to also apply to the on-sale bar. So best not to rely on it since it isn’t well developed in case law, but the one year grace period is there if needed.
General description, not specific legal advice of course.
That was very helpful, thank you. I am trying to figure out a way to test the market a bit as I increase my investments.
If you have an appropriate NDA with another entity which covers the patentable IP, you can share that IP with that entity and it is not considered public disclosure. I believe this includes giving the other entity “engineering samples” of a device embodying the IP as long as you don’t charge for the sample (it used to be that way at least - not sure if the 2013 law changed things).
A cheaper filing option is a provisional patent application in order to get a filing date. It’s basically just a placeholder though. No human at the Patent Office looks at it. In order for that first filing date to count, you have to follow up with a non-provisional application within a year. Also for that first filing date to be worth anything you have to put as much detail and description into that provisional filing as you can.
If you don’t have a high household income you might look at the pro-bono programs that have been getting more support from the Patent Office recently to see if you are eligible.
I will look into that, I am starting on a shoe string here.
How specific do patent claims have to be?
I wondered about some company that claimed patnet on assorted finger swipe gestures on a touch screen, whereas Larry Niven in The ntegral Trees in 1984 described a spaceship control where closing a door was done with a pinching motion on a bridge control screen.
How original does something really ahve to be? What is prior art?
You’re asking the hard questions that keep patent attorneys like myself employed.
But just as one example, just because something is generally described in the prior art* doesn’t mean that a specific way of doing it can’t be patented if there is enough detail in the claim regarding how it is done.
How are the finger swipe gestures being interpreted by the processor? Is there an algorithm involved? How much of that algorithm made it into the claim language. Is it described specifically enough to overcome the prior art that doesn’t get into the specifics? Is the touchscreen hardware unique or being utilized in a unique way? And on and on.
*and yes almost every published thing could be considered prior art, even sci-fi stories.
What type of patents do you normally handle?
Most of my applications are software and/or electromechanical in nature. I generally don’t do chemical compound or pharmaceutical patents. Those are pretty specialized. I have a computer engineering background.
I had an engineer friend of mine doing a a patent search and so far he has found nothing, I know there is some prior art on this over the years, but no one has been able to really make it work very well… Can specific details be enough to qualify? Or a dramatic improvement on how it works.
I’m not a patent attorney, but I got a lot of patents over the years. You asked about claims and prior art.
From my experience patents can have several claims which vary from very broad to very specific. The broad claims give the most protection, but if they are denied by the examiner or later invalidated by a judge there are hopefully more specific claims that stand up under scrutiny and still offer some protection. In your example of finger swipes you could have Claim 1 “I claim a finger gesture that closes a door”, Claim 2 “I claim a finger swipe that uses two fingers to open a door”, Claim 3 “I claim a finger swipe that uses the index finger and thumb of the right hand to open a door”, and so on. Each claim stands alone and if any are invalidated, the others still stand.
You are required to supply all the known prior art with your patent application so you have to spend a lot of time searching the global patent databases, do literature searches, research papers, etc. The patent examiner will do their own prior art search and later someone may challenge your patent by citing additional prior art. What is, and what isn’t, prior art is determined by the examiner first, and later by the courts if necessary.
Writing patents and crafting claims is a sophisticated art and there is no substitute for a good patent attorney.
Lastly, from personal experience, I can tell you that unless you are a large corporation or someone with very deep pockets, there is little value in having a patent. There is little incentive for a large corporation to honor your patent when they can violate it knowing full well you don’t have the resources to defend it. I had one situation where I had licensed a patent to a large corporation. They paid monthly royalties for two years until new management decided to simply stop payments. They simple said they wouldn’t pay any more and continue to sell the product in violation of their license agreement, but there’s nothing I can really do about it. It’s a long shot, but you can sometimes find a law firm that will take on your case on a contingency basis, but it has to be nearly a sure thing and valuable.
There’s a movie called “Flash of Genius” about Ford stealing the idea for intermittent windshield wipers that illustrates the problem.
You just described exactly what is worrying me. I started playing with my idea over 50 years ago. very now and then I would pick it up ponder for a few minutes and then forget about it for a few years, A few months ago I started to tackle it with a bit more enthusiasm and I feel like I have solved the problems. My rough prototypes are proving the concept, and I have continued to work out the problems one by one. I think I have it now and it could be bigger than I ever imagined. It has me kind of paralyzed with fear of making a wrong move.
Let me correct this one thing in your otherwise good post. You are required to disclose the prior art you are familiar with. You are definitely not required to supply all the known prior art. You also are not required to spend any time searching for prior art that you are not already familiar with. Of course, it can be a good idea to do so for other reasons.
I tell people all the time that the best use of a patent is if you are building a product or creating a business around your idea. A patent is the right to exclude others and you want to exclude others from doing your business.
While it can happen that you patent an invention/idea and are able to license it for big bucks, I compare it to winning the lottery. It can happen but is not the most likely scenario. Big companies would rather spend their big bucks working around your patent.
A large amount, if not the majority, of patents are small improvements on something that already exists.
A patent application is supposed to disclose sufficient information to enable anyone ‘skilled in the art’ to make the invented article. It does not mean you have to disclose the entire Technical Data Package. Revealing just enough to obtain protection, but no more, is what you pay patent attorneys for, and it is a skilled art.
There’s the notion that anything published before you filed has to be an “enabling disclosure”, that is, give enough detail that someone of skill in the art can make the idea work without undue experimentation.
I know that, in Canada at least, prior attempts to do the same thing that didn’t actually work, often can’t be used as prior art against a later application that actually does work. The notion is that, even if you can’t pinpoint it, you’re doing something different from the prior art, different enough to make it work properly.
Improvements are actually the basis for most patents. Probably more than 90% are adding to existing patented ideas, very few are entirely new concepts never heard of at all before.
Shouldn’t (their) lawyers who encouraged breaking the law by failing to pay royalties be disbarred for such recommendations? Sounds like the system is totally broken if not.
Also, why should it be so expensive to defend against this? Shouldn’t the contract just be reviewed by a judge who says “Valid - pay up”.
Corporate attorneys, in high status and highly paid jobs, aren’t in that position because of their high ethical standards. Fealty to the client is paramount. Just look at all of Trump’s lawyers.
From my experience, you could find a lawyer to send a letter on their letterhead raising the issue for maybe $500. For $25,000 you might be able to file a law suit. $200,000 might get you past all the meetings, appeals, court appearances, etc, but it can easily run to $500,000 to actually get your day in court. Then, even if you win, you may not get compensated for your legal expenses.
The bottom line is that civil law is all about who has deep pockets. It’s a tough environment for individuals and small businesses when dealing with technology, intellectual property and relationships with large corporations.
Patent infringement lawsuits are notoriously expensive, because they often turn on competing interpretations of very technical issues, with experts on both sides.
Plus, you usually have to defend the whole patent. It’s not enough to prove that they did they same thing as you did, they will routinely challenge the validity of the patent itself, arguing that the prior art bars the patent claims at issue, or that there was some flaw in your application that should have denied you the patent. And all of that also turns on highly technical questions being argued by experts in the field.