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TechRoadmap Directions
  IP Issues of Interest to High Tech Companies
Vol 3 Issue 4 April 2003

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New Service Reminder

Patent Pending Revisited

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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  Welcome!!
Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Happy April! The month of Easter, Passover, Patriots' Day and Income Taxes. Having spent our free time on our taxes, we decided to visit the Directions archive (www.techroadmap.com/DirectionsArchive.htm) to find a subject worth revisiting. Last month we talked about how a patent is a deal with society, with various terms and conditions. One condition we didn't discuss was that your patent protection does not start until you've successfully negotiated the deal - that is, until your patent issues. Please read "Patent Pending Revisited", originally from our March 02 issue, to understand the pitfalls of forgetting this contract condition.
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  • New Service Reminder
  At the request of several clients, TechRoadmap is pleased to formally provide a new service offering. In addition to our current, tactical IP support [Invention Mining (TM), Patent Strike Force], we now design tailored IP Development processes for clients who have outgrown their current, catch-as-catch-can approach. Details are available on our web site. For immediate information, please use the "Tell me more!" link below.

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  • Patent Pending Revisited
  Many busy companies find themselves rushing to file a patent in the weeks before they attend a conference or trade show. Often, they choose to file provisional applications, knowing that these applications are not examined and feeling any shortcoming can be "fixed up" later. They also know that filing an application earns them the right to mark their product "Patent Pending", so they attend that trade show feeling they are standing behind the shield of patent protection. While it is certainly a good idea to have patent applications on file before attending a trade show, it is equally a mistake to believe you have "protection" during the time your patent is pending. To learn why "Patent Pending" and a token will get you on the subway.....read on...

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  • Tip of the Month
 
A pending patent is no patent. When you are waiting for your patent to issue remember:
  • Anything you say may help your competitor - until your patent issues, you are effectively revealing your trade secrets. If your patent never issues, these secrets are gone.

  • Your patent may not cover what you are revealing - Issued patent specifications and claims are often less broad than in the as-filed application. Don't give up a non-patentable competitive advantage.

  • Treat your disclosures as if you had not yet filed - For US filings, you have one year after disclosure to file your application. Just because you have a patent pending you shouldn't reveal more than you would if you were yet to file.

  • Be particularly wary of provisional filings - As we noted, sometimes these filings are less carefully drawn than regular filings. Also, it is not inevitable that this information will become public anyway.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  Industry's Best Glossary
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  • Patent Pending Revisited - continued
  A patent is a deal with the society; if you tell the world how to make or "practice" your invention, then the government will let you keep everyone else from practicing your invention for 20 years. Of course, this temporary monopoly only comes into effect when your patent is issued, not while it is pending. You use the "Patent Pending" mark to warn competitors that your monopoly power is on the way.

So what happens if your patent doesn't issue? Unfortunately for you, if you've gone to a trade show or otherwise provided details about your invention to the world, you have let the cat out of the bag, the genie out of the bottle, opened Pandora's box...in short, you have informed your competitors of your next generation product goals and how to get there and you have no way to keep them from duplicating your invention. While filing a patent application is a necessary step in obtaining your monopoly power, it is in no way sufficient. Filing the application preserves certain future rights for you, but it in no way assures you that you can prevent a competitor from copying you; only the issuance of your patent does that.

The error of unnecessary disclosure is often worse when a provisional application is the basis for "Patent Pending". Unlike regular applications, which are (generally) published within 18 months of filing, provisional applications become abandoned in 12 months and are not published. Unless you file a regular application claiming priority to the provisional application, you can keep your secrets secret for those 12 months of provisional pendency.

Even worse, since many companies consider provisional filings "works in progress", they may unintentionally reveal invention details that are not adequately described in the pending provisional application. While these omissions can be covered when the non-provisional application is filed, the ability to file a foreign patent on those aspects of the invention may be permanently lost due to differences in foreign and US disclosure rules.

Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.