What Are the Dangers of Publicly Disclosing My Idea?

You have exactly ONE year from the date your invention is publicly – disclosed, used, offered for sale – to file a provisional or non-provisional patent.  If your idea has been exposed to the public and you don’t file for a patent within ONE year from the date of public exposure, you may be forfeiting your patent rights.  Moreover, by publicly disclosing your idea, you risk someone misappropriating your idea and claiming your idea as his or her own.  Though there are ways to prevent misappropriation, they are difficult and expensive.  This is why publicly disclosing your idea before at least filing for a Provisional Patent is not recommended.

For more information read about the definition of public disclosure.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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How Do You Prevent Provisional Patent from Expiring?

One way to prevent the provisional from expiring is to continuously have a provisional one file (just updated to the latest version of your back-end). If you let the provisional expire (and your back-end isn’t receiving a lot of press), you are back to square one.  For the provisional to save you the risk of challenging a Patent, you must timely file a non-provisional before the provisional expires.

Having a provisional on file is the best way to go – they were established to level the playing field against large entities To prevail for the patent rights (before anyone else can get a patent to assert over you in the first place), you must be the first-to-file. Having prevailed to the patent rights is a way of saving in legal fees, building a fence around your technology, and growing your intangible asset portfolio.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can I Get a Patent if I Already Made A Website for My Product?

If your front-end technology has been fully described on your website for more than a year, you wouldn’t qualify for patent protection on the subject matter disclosed. However, the portions of your technology that have not been publicly disclosed for more than one year are fair-game for patentability. There is another factor to the equation, however – this concerns public use and public sale.

If you’ve been selling a stand-alone product to the public for more than one year, and the back-end operations to the stand-alone are performed in the public domain (e.g., an end-user’s computer), then the question as to patentability becomes a little more complex. In this scenario,you should still consider filing for patents, but with emphasis on defensive considerations in view of our new Patent Laws (i.e., to prevent other’s from obtaining patent on back-end technology that you came up with first).

In general, laymen terms, the law provides us with a one-year grace period to file for patent on technology that has been made available to the public. Anything that’s been available to the public for more than one-year will be hard to protect unless you’ve been keeping the technology in a ‘black box’, protected from public discovery. With the new patent laws, there has been a surge in patent filings covering back-end operations that have been ‘available’ to the public for more than a year, but ‘protected from public discovery’ during that period.

However, if the only operations that are performed in the public domain (e.g., on the end-user’s computer) are the front-end operations, and the back-end operations remain on, for example, your private servers, then you may qualify for patent protection still.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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How Do I Convert My Provisional Patent Application into a Non-Provisional Application?

An applicant who files a Provisional Application for Patent must file a corresponding Non-Provisional Patent Application within 12 months to benefit from the priority date of the provisional filing. The corresponding Non-Provisional Patent Application must specifically refer to the Provisional Application.

For instance, the non-provisional patent application would contain a paragraph reciting “The present applications claims priority to the earlier filed provisional application having serial no. XX/XXX,XXX, and hereby incorporates subject matter of the provisional application in its entirety.”

The USPTO will then compare the Non-Provisional Patent Application with the earlier-filed Provisional Application. If the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the applicant the provisional application’s earlier filing date for any patent that issues.

Alternatively, an applicant can convert a Provisional Application for Patent to a Non-Provisional Application. This option saves the applicant little effort, however, and virtually no money. Furthermore, the Provisional Application’s filing date is lost and the filing date for any patent that issues will be the date of conversion.

To better understand this concept, we must consider that a patent expires 20 years after its filing date. If you file your non-provisional patent application on Jan. 1, 2000, then it will expire on Jan. 1, 2020. Now let’s consider the following scenario – you had filed a provisional application on Jan 1, 1999 and then filed a non-provisional on Jan. 1, 2000, claiming priority to the provisional filing. Your non-provisional filing will be examined with the priority date of Jan. 1, 1999, but your patent protection (if granted) will expire 20 years after the filing of the non-provisional application (Jan. 1, 2020). Yet, if you decided to convert your provisional into a non-provisional application, you would only be eligible for patent protection through Jan. 1, 2019. In essence, the year of provisional protection does not count against your 20 year period of patent rights.

So why would anyone want to convert the provisional filing to a non-provisional? The question can be answered when considering public disclosure. A non-provisional application must be filed within one-year of the inventions public disclosure. Let’s analyze this scenario with an example. If you publically disclose your invention on June 1, 1999, then file a provisional on Jan. 1, 2000, you have until June 1, 2000 to file a non-provisional patent application. Even though provisional patent protection lasts through Jan. 1, 2001, it would be too late to file a non-provisional application at that point. So, if it is now June 2, 2000, you can no longer file a non-provisional patent application since you had disclosed your invention more than a year ago. In this case, you should convert your provisional into a non-provisional filing ñ since it will retroactively apply your provisional filing date to your non-provisional conversion date!

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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How Long Does a Provisional Patent Protection Last?

The USPTO gives you one year to convert your provisional patent to a formal patent. If you do not convert your provisional patent to a formal patent, your provisional patent protection simply expires. If you are still not ready to file for a formal patent after the one-year period, you can renew your provisional patent protection by simply refilling for a provisional patent – if and only if you haven’t publically disclosed the subject matter of your provisional more than 12 months prior to the re-filing date. However, you will only be allowed to claim priority to the date of filing for the non-expired provisional patent.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What if I Disclosed My Idea before Filing for a Provisional Patent or Formal Patent?

The USPTO allows you one year from the date of your first public disclosure to file for patent or provisional patent on your idea. This one-year period is known as the ‘grace period’. If you do not file for a patent or provisional patent within one-year of your first public disclosure, you will have been deemed to have legally abandoned your patent rights to the idea. When considering a public disclosure, keep in mind most countries don’t give you this one-year grace period – you will have forfeited your patent rights in those foreign jurisdictions upon your first public disclosure.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Should I Do a Patent Search before a Provisional Patent?

“Do you recommend doing a patent search before applying for a provisional patent or should you do the provisional patent right away? I have a product that is already on the market, and want to know if it has an active patent. Thanks for your time.” – Anonymous

I would say it’s more important, at this stage, to file for patent protection rather than conducting a patent search due to a few factors.

Factor 1

Our new patent laws (enacted this March) have made it more important to file for patent protection as soon as possible. Why? With this new laws, the first inventor to file for a patent on an idea/invention wins the patent rights – even if another inventor can prove that she came up with the idea first! Now that your idea is out on the market, if someone else sees your idea and beats you to the patent filing – you can forget about getting patent rights to your idea, even if you were truly the first one to come up with it. (There are some technical exceptions here, but we can get into those by telephone.)

Factor 2

Keep in mind, the U.S. government gives you 12 months from your first initial disclosure to file for a patent on your idea. If you don’t file within a year of the day you brought your product to market (or otherwise made a public disclosure), you are prohibited from obtaining any patent rights. So, the clock is ticking in two ways: 1. Be the first one to file for a patent, and 2. File for a patent within 12 months of your initial public disclosure. There are exceptions to point (2). You can learn more here

Factor 3

Provisional Patent applications are relatively cheap, especially considering the options our platform provides you with. Thorough patent searches take time and are just as costly. In my opinion, it’s best to use your funds to secure your priority with a provisional patent application and get the “patent pending” status right away… especially since your product is already out in the market. Since provisional applications aren’t examined for ‘novelty’, you are not gaining much by performing a patent search.

Factor 4

A non-provisional patent application leads us a different reasoning. (To learn more about the difference between a provisional patent application and non-provisional here. The costs associated with a non-provisional are substantially more than the provisional application. Therefore, it may be wise to conduct a patent search before investing the time and resources in pursuing a non-provisional patent application.

Furthermore, when attempting to file multiple inventions in a single non-provisional application, the Patent Office will issue what is known as a restriction requirement – forcing the applicant to split the inventions up into different patent applications. This causes both delays in examinations and additional fees. This is why it is important to split the ideas up, and do so early.

Factor 5

With every submission, we spend 30 minutes searching the United States Patent and Trademark Office’s patent database to see if your idea can be knocked-out from patentability. The “knock-out” search is just designed to give you an idea if something exactly like your idea has been patented before. It doesn’t give you the full picture. To get the full picture, you would need to invest in a more thorough patent search, which we offer for $600.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can You Patent Something Yourself by Mailing It to Yourself?

“We are trying to achieve balance between privacy/trade secrets and patent protection. Specifically, we have an innovative product in process for which we wish to obtain at least five patents. However, we do not yet have a fully functional prototype and our software is in beta phase. Is there any way to retroactively get patent protection [via unopened, postmarked application packages] while not divulging information to the general public to prevent copy cats?” – Anonymous

I’m glad you’re seeking counsel on the issue. The answer you are looking for is known as provisional patent protection. The “sealed envelope” method, unfortunately, no longer works in view of our new patent laws (enacted in March of 2013).

A provisional patent application saves your spot in line at the patent office for a patent. Essentially, a provisional patent application tells the Patent Office “I’m working on this prototype, here is a disclosure of what it is, please save my spot in line for when I am ready to file a patent application.” In turn, the patent office will lock your provisional application up in a vault, not disclosing it to anyone, and grant you 1 year of “patent pending” status. Within that 1 year, you have to follow up with a full patent application. The full patent application will claim priority to the date you filed your provisional patent application. In this way, you are ‘retroactively’ claiming priority to the earlier provisional filing date.

Why it’s important

As you may be aware, the new patent laws have created a “first-to-file” system. This means that the first inventor to file a patent application on an invention wins the priority to any potential patent rights. Before this new “first-to-file” system, we had a “first-to-invent” system. Here, you could ‘seal your idea in an envelope’ and then submit it to the patent office as prove that you were the first one to conceive of the idea. Unfortunately, what matters most now is that you be the first one to file a patent application.

This is why I would encourage that you file provisional early, as soon as you have conceived of your idea. Then, within a year (and, hopefully, by then you’ve developed a prototype), come back with a full patent application on the idea.

Multiple Filings

Break your idea up into segments (if possible) and file each segment as a provisional patent applications. A full patent application (non-provisional) can claim priority to more than one provisional application. However, as soon as you claim priority to a provisional application, the provisional application becomes public record. Thus, if you want to keep different segments of your ideas from being disclosed, file them in separate provisional applications. That way, when you follow with a non-provisional, you can pick and choose which ideas are “ready” to become public record, and which ones can remain as provisional, undisclosed protected ideas. Otherwise, if you put every aspect of your ideas into a single provisional application, then the non-provisional that follows will make the entire idea available to the public, whether you are ready or not. By splitting ideas up into different provisional patent applications, you retain control on which provisional applications will get disclosed to the public.

Furthermore, when attempting to file multiple inventions in a single non-provisional application, the Patent Office will issue what is known as a restriction requirement – forcing the applicant to split the inventions up into different patent applications. This causes both delays in examinations and additional fees. This is why it is important to split the ideas up, and do so early.

Non-Disclosure Agreement (NDA)

Since provisional patent applications are never disclosed to the public, any disclosure you make to any third party about your idea must be made under a non-disclosure agreement. If you do make a public disclosure (or public offer for sale) of your idea, you have 1-year to file a patent application or else the idea is deemed to become of public record.

Retaining an attorney to perform this analysis is the first step in avoiding liability in the US.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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What Format Do Patent Drawings Have to Be Submitted in?

Figures submitted with a provisional application can be informal.  A figure can be a hand drawing, a photograph, a CAD illustration, VISIO files, flow charts, block diagrams, or any other type of visualization of your invention.  They do not need to contain labels or be referenced to the description portion of your Provisional Patent, though it is best to do so.  If you can, SmartUp® asks that you convert your figures into PDF format prior to uploading.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Are Figures or Drawings Required for a Provisional Patent?

Figures or drawings are not always required for a provisional patent. They are only required when they are necessary for one of ordinary skill in the field of your invention to understand your invention. Nevertheless, we strongly recommend submitting specific drawings that adequately depict your invention. This is because detailed illustrations make it easier for the USPTO to later associate a corresponding Non-Provisional Application with this earlier filed Provisional Application.

Furthermore, if you determine that drawings are necessary for one of ordinary skill in the field of your invention to practice your invention, the drawings you submit must be detailed enough to do so. If the drawings filed with your Provisional Application fail to meet this requirement, any corresponding Non-Provisional Application may not receive the Provisional Application’s priority filing date. Your Patent Attorney can help you obtain formalized drawings upon request.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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