I’m not sure how you can find out if anyone else has ‘stolen’ the idea (after seeing it at the Houston show) and is manufacturing it. If it is such a great idea, I can’t imagine that it won’t be copied and no one has any protection. If a thief runs with it, they will probably change the name so you can’t track it that way.

You wrote, “My company was the first to bring the product to the national market place.”: what IS your company? Do you have/rep other products?

Yes, thank you Margaret. That was included in our request to our attorney. I will update this post in the next few days. Thanks to all of your for your suggestions thus far.

That’s how I read it, Clifton. Of course, I would get professional advice to be sure.

Another thing I would check in to, since there has been no patent search, is whether or not this product is infringing on someone else’s patent. I think that would be worst case scenario. You and/or the manufacturer might be stuck holding the bag if something comes up.

Hope all goes well with the manufacturer. Let us know how it goes.

Well thank you, Margaret! That is helpful actually. So worst case scenario, we can’t obtain a patent, and neither can the inventor UNLESS he changes it somewhat which I seriously doubt he has the resources to do. Nevertheless, the good thing is that if it is public domain, then the manufacturer shouldn’t have a problem working with us on the manufacture of the product. We will find out tomorrow and I will post an outcome here.

Oh, I see.

From USPTO:
“The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention, whichever occurs first. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)”

“The benefits of the provisional application cannot be claimed if the 12 month deadline for filing a non-provisional application has expired.
A provisional application cannot result in a U. S. patent unless one of the following two events occur within 12 months of the provisional application filing date:
a corresponding non-provisional application for patent entitled to a filing date is filed that claims the benefit of the earlier filed provisional application; or
a grantable petition under 37 CFR 1.53©(3) to convert the provisional application into a non-provisional application is filed.
Provisional applications for patent may not be filed for design inventions.
Provisional applications are not examined on their merits.
Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
If there are multiple inventors, each inventor must be named in the application.
All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
No information disclosure statement may be filed in a provisional application.”

I guess my concerns would be that since you are not the inventors, you can’t file a Patent of any form on it. And since it has been for sale that would prohibit patent protection as the public sale would be considered prior art.

“One more thing to note: Public showing of an invention causes that invention, in many countries, to be unpatentable. The showing of the product becomes prior art for its own patent application. As an inventor, if you choose to file for protection overseas, this is important to be aware of.”

http://www.edisonnation.com/forums/selling/topi...

http://www.uspto.gov/patents/resources/types/pr...

Sorry, if this doesn’t make sense. I’m doing this on my iPhone and can only see a small portion of what I typed. Therefore, no proofreading.

Thank you Margaret. Let me give you some more details. We were contacted by the “inventor” in Feb of 2011, this year. The first public showing of the product occurred on April 5, 2011 at the Houston Home & Garden Show and my company was the entity that brought it to market. Between 2008 (PPA submitted by inventor) and Feb. 2011, the inventor did no marketing of the product publicly. Again the PPA expired in 2009, so, also between 2009 and Feb. 2011, there was no active marketing of the product. Am I correct in understanding that having it in the public domain means that it had to be actively marketed?

Clifton,

I don’t think you can file a PPA on the product since it has been in the market for more than a year, unless of course, you have made some sort of a change to it. I would also think that you could continue to manufacture and distribute it without the inventor’s involvement at this point. I would agree with Roger that it would be considered public domain. Also the PPA could be considered prior art, thus rendering the idea unpatentable in its current state. If you made some sort of a change to it, you may be able to file for a patent. This is my non-attorney opinion. I would definitely talk to a lawyer as they would be best equipped to work around these sort of issues.

Thanks again, Roger. No, the manufacturer has not filed for patent protection which is why we filed a PPA as an interested party which is an option on the PPA. I will keep you all posted.

Also, thank you Jane S for the referral and link. I will contact them on Monday.

Since I am not a lawyer this is just my opinion and not legal advice.
I would think that after 3 years it is now public domain since you have been selling it during this time and he never filed the patent within the one year limit.
I assume that unless the product being patented was part of the contract he is still legally able to do with it as he wants. Since it is public domain I don’t think he can stop you from competing against him. Did the manufacturer file any type of patent protection?

J.S., the PPA was filed in 2008 and expired in 2009. My company was the first to bring the product to the national market place. The inventor suffered an illness after filing the PPA and never proceeded with bringing the product to market. It would be beneficial of course it could be patented but not necessary. Our main concern is our ability to work with the manufacturer to manufacture it. As to the breach of contract, yes in Texas there are strict governing law provisions about breach of contract, particularly with termination of a contract, etc.

Roger, thank you for your response. I agree that there were some pitfalls we fell into. Our concerns now are:

1. does the inventor’s lack of a PPA or Patent void any contract of “confidentiality” he may have with the manufacturer?
2. can the inventor legally prevent us from selling the product by claiming he has exclusive rights to retain the manufacturer to manufacture it? I assume not since he holds neither a PPA nor a Patent?

In answer to your question of whether or not we have recouped any of the $10,000 in marketing, yes, we have had sales but have not recouped our entire investment. We have made more sales than the inventor has ever made since the products first date of manufacture. In fact, the first large order that the inventor and manufacturer ever received came from us, the only distributor.

This sounds like a breach of contract issue and you should contact an attorney in the state where the contract was made or figure out if there is a governing law provision (which may or may not be valid). Second, when was the PPA filed because there is a 1 year period for on sale and public disclosure that may have lapsed, which means the invention may not be patentable anymore.

Clifton, not sure why you are asking for help here when it looks like you should be consulting a lawyer and patent attorney. I find this a little strange. You state that you were approached by an inventor to distribute and sell a certain product and signed a distribution contract for exclusive rights to market, sell, etc. the product for a period of 6 months. How did the Inventor find you? I assume it is because you are doing this with other products or is this your first product? You say they gave you assurances they held a patent. Most companies would have asked for the patent number so they could look it up and also list that patent number on the product.
You mention finding out there was a problem with the PPA within the first month and the Inventor said they took care of the problem. First, a PPA is not a patent as you mention they first stated they had. This should have been another red flag that there is a problem. You mention that (The manufacturer is unaware of the fact that the inventor does not hold a current Patent of valid PPA). If the manufacturer is only providing you the service of making the product they don’t care if it is patented or not because they get paid regardless of if it is protected.

This situation is unfortunate, it sounds like you made a number of bad business decisions by not verifying the Inventors claims prior to going into business with them. It will be interesting to find out if you will be allowed to file the PPA on the Inventors product shutting them out. If you are allowed to file will you be required to pay any compensation to the Inventor or will you now own the product.
You stated you have spent $10,000 on marketing and brought the product to market. So, did you make your investment back from the sales?

I don’t know if this may help you or not, but here is a link that could possibly clarify for you more, I hope that it will help. Sorry for the situation that you find yourself in, and keep up hope.

http://www.mekiplaw.com/about.html