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TechRoadmap Directions
IP Issues of Interest to High Tech Companies
Vol 2 Issue 3 March 2002

 
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When your patent is pending

Shameless Self Promotion

IP Links of Interest

Patent Glossary On-Line


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  Welcome
This is the 12th issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices.

 
 
 
  • Transition to New Format
  You probably have noticed that this issue of Directions looks different from last month's. We are trying an "emailing" service, Constant Contact, to help manage the Directions subscriptions efficiently. To obtain the all of the benefits of their service (e.g., correct versions for HTML, AOL, and Text), we needed to adapt to their templates. Although this is a work-in- progress, please let us know what you think of the change, and rest assured that your email address is not being shared with any other email lists.

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  • When your patent is pending
  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...

 
  • Shameless Self Promotion
  Watch in April for the first of a series of occasional articles in Mass High Tech newspaper. We will be writing on Court of Appeals decisions that affect local companies

Read MHT online or get free subscription

 
  • 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.
 
  • Patent Glossary On-Line
Industry's Best Glossary

 

  • Patent Pending, Continued
A patent is a deal with the government; 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. If you file a regular application based on the provisional application, you can keep your secrets secret for those extra 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.

Points to remember when you have a patent pending:

  • 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.

Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.

 
 
 

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