« One way to ward off spam - monday fun | Main | /s/ - the blogger formerly know as douglas sorocco »
September 21, 2004
Patent Rights in under a month?
IP Law & Business reports an interesting way to quickly stop someone from using your idea.
Since patents generally take years to issue, the idea of a patent "emergency" seems counterintuitive. The referenced article shows that time is often critical for new inventions. One example is a new cereal that's high in protein and low in carbohydrates. A manufacturer has two options when faced with a ground-breaking new product. He can file an application and wait until the patent issues in a few years before selling the product. Alternatively, he can file an application and start selling the product, allowing others to copy the invention long before they are aware of a patent application. Since patents aren't published for 18 months in the USPTO, the infringer will not even be aware of infringement for over a year. An early publication is available, but it still takes 4 to 6 months. The infringer's lack of knowledge for this time means reduced infringement recovery for the patent owner. These months can be very critical in business.
So, what can a company do?
It can file a patent application in Switzerland. This can result in the patent being published within a month. Under the Patent Cooperation Treaty (PCT), patent applications published through the international receiving office benefit from U.S. publication laws.
Of course, filing in a foreign office may require some knowledge of different practices, but in patent "emergencies" it may be worthwhile.
Posted by at 01:57 PM.
Permalink: Patent Rights in under a month?
| Comments (5)
| Sphere: Related Content
What a great tip -- this should be fleshed out more fully and developed into a full fledge practice.
Posted by: Douglas Sorocco at September 22, 2004 04:13 AM
What happened to the good ol' "Patent Pending" as a way of notice? And what about publishing the patent application on your own web site if it's so critical that others see it. There are also web sites that publish art for defensive reasons. The suggestion above just seems like a lot of work when easier means are available.
Posted by: carol at September 23, 2004 06:59 PM
Carol,As I understand, the methods you listed are all effective prior art. However, publication of an application is necessary for royalties during the pendency period.35 U.S.C. § 154(d)(1) states “a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application . . . and ending on the date the patent is issued - makes, uses, offers for sale, or sells . . . and had actual notice of the published patent application”This still requires actual notice to the infringer, and royalties cannot be recovered unless the patent issues on the same invention that was published.
Posted by: Melody Wirz at September 24, 2004 04:10 PM
Carol -The issue being dealt with by the suggested practice is when the inventor does not have a product on the market. Oftentimes patent filings are out ahead of the actual introduction of a product into the marketplace. It is almost de rigeur that a biotech or startup company will not introduce a product until a patent is actually issued. So if there isn't a product that can be marked with patent pending -- without the publication and notice procedure, the inventor is without recourse for pre-issuance infringement.The statutory provisions (35 U.S.C. 154(d)) require publication of the pending patent application as well as *actual* to the alleged infringer before the pre-issuance damage provisions of 154(d) come into play.So while I would concur that patent pending is important, it is only useful when you actually have a product on the market embodying the claimed invention. Publishing on the internet is also a good idea - but it doesn't meet the actual notice provisions.That is why this is a nice tip -- quick and fast publication (instead of 18 months) and then you can send the published application with a little FYI letter to the alleged infringer.Thanks for the comment!
Posted by: Douglas Sorocco at September 25, 2004 03:44 PM
auto ofran dan dooley budgetrentacar alicante dan denmark sales car rental in florida m cape dooley carrental kingston cheap minivan rental disabled almo car shannon gold car rental croydon for the rental care tenerife cairns car rental mileage france in city clark rentacars avisrentacar kennings florida hamilton motorhome no birds budgetcar tree cheap cairns myers car rental tenerife nationalcarrental almeria minivan for europe campervan nelson myers croydon renting ottawa rentcar nelson shannon cairns save perth car rental corfu swift renting rentacars rentcar south autorent deals sales no
Posted by: Ste Syd at February 9, 2006 11:59 PM
