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Can I send something to myself as proof that I invented first?

quanedison's Avatar

This is commonly known as the “poor man’s patent”. In the past, this was a way for an inventor to claim first-to-invent status and overcome a competing patent application filing. However, since the new law of first-to-invent came into effect in 2013, any proof of first-to-invent is irrelevant – the only thing that matters now is who filed with the USPTO first. So the best way to secure an early date is by formally filing a PPA with the USPTO (as mailing to oneself does not work anymore).

Very closely tied with this subject matter is “public use”. It is common that after an inventor comes up with something, the inventor documents it (e.g., mailing to himself/herself) and uses it. Under the new law, once an invention has been used publicly, the inventor can no longer file a patent application on that particular invention. Here’s an example of a typical public use that would bar an inventor from filing a patent application: An inventor comes up with a new back brace. The inventor wears it to walk around in public, and to be discreet the inventor wears the back brace underneath his clothing where the invention is hidden from the public view. The fact that the inventor wears the back brace in public is public use, despite the fact that he wears it underneath his clothing where no one can see it. The best way to prevent the public use bar is to file a PPA before publicly using the invention.

-Quan

Karen C Adams
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williamj's Avatargold

How can inventors “test” their inventions without public use?

For instance…

I invented a whole new means of transportation. There is no way to assure that the invention works without taking it for a test drive (public use). If I can’t test it, how can I patent it?

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quanedison's Avatar

Most excellent question William. There is an exception to the public use bar. That exception is that the public use was for “experimental purposes”. To qualify under this “experimental purposes” you will have to really prove it. For example, it would be beneficial to have note books showing the collection of information from your experimental public use, tinkering, etc. So if you can prove that it was a public use for “experimental” purposes, then the public use bar will not apply.

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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stephminor's Avatar

Quan,
Thanks for posting such helpful information!

Stephanie

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elalpo's Avatar

@Quan

So basically in case of EN submission, even though they are OK with inventors not having patent or PPA, it still makes sense to file for one before you submit your idea to EN?

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scardinal3's Avatar

Thanks Quan…always like your posts….question…

With the new law…is the 12 months grace period “priority” still stands?

regards,

Sylvain

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ipowereverywhere's Avatar

Quan, if a patent lapsed a few years back- is it still considered active or does it go defunct???

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quanedison's Avatar

Hi Everyone,

A utility patent typically has a life span of 20 years from the earliest priority date. It can lapse if the respective maintenance fees are not paid. If it lapse, then there are ways to petition to revive if certain conditions are met. An expired or lapsed patent is not enforceable, i.e., not active.

Under the new law, there is no more grace period of 12 months. There is a minor exception for public publication. So any sale or public use would jeopardize an inventor’s ability to file on that invention.

For EN, I believe the submissions are under a confidential agreement (please check) and as such submission would not be a public disclosure.

Let me know if I haven’t answered all the questions :-)

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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speedbump's Avatar

Thanks Quan…. as usual very informative. I understand the principle behind your example with the back brace in theory being public use. What I can’t wrap my mind around is why and how this would ever be an issue in this case. I would think if I went to the trouble to hide my invention from the public and used it secretly to keep it from public view there wouldn’t be any documentation of this use and no reason for anyone to question my test practices. I do agree if your at the prototype stage it’s probably time to think about PPA but I always though if I kept my work out of public view I was safe. What if I wore my back brace over my clothes, on my property but it could be seen by people going by on the street…. would this be public use?

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quanedison's Avatar

Hi Archie,

Yes, it’s a very non-intuitive concept. Basically if the public doesn’t see my back brace, then how can it be public use, right. Ok. Here’s how you can start breaking this down. The public policy behind the government issuing a patent is this: When the government grants an inventor a patent, it is giving the inventor a monopoly on this invention and all the benefits of having this monopoly. So if the inventor “uses” this invention for some time, then the inventor has already benefited from this invention. As the inventor has already benefited once (from using the invention), the government deems that it would be unfair to grant the patent to the inventor for the inventor to benefit twice (no double dipping).

Hope this helps explain the law.

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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chief's Avatar

Elena, As Quan said, the Agreement with EN contains a non-disclosure clause. So we are covered, between us and EN. The trick though is “does it make sense” to file a PPA anyway? I think it does, for other reasons. But the timing is not before you submit the idea to EN. The time from the moment you file with EN, till a license agreement is signed and EN files a patent application, it could take months. If anyone files a NPA within that time period that covers what you might claim, he or she will have a priority over yours. That is a real rick if you think you have a real shot. I suggest that anyone who gets a G6, G7, R7, G8 or R8 should seriously consider filing a PPA as the value of your idea is largely verified and the idea worth protecting. Even when you get a G8 and the sponsor is evaluating, they still have six months or longer to decide. The risk is still there. Of course you can file the PPA earlier, to minimize the risk, but one feels it more justified if the idea gets pass stage 6. Just my personal opinion.

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chief's Avatar

William, Sometimes companies use “simulation” to test all sorts of things without “going public”. Of course it has limitations. But it also has strengths. It can be better controlled, and criteria can be set more precisely for a more accurate analysis. And it can be done privately. Once that is done, they might feel justified to file a NPA and proceed with a true, and often expensive public testing. For many products, it is not hard to test on say, 20 or 30 people (and get them to all sign NDA) to get a definitive result for a go or no go decision. Even with a complicated medical device, we often started to see a pattern after a dozen or so user testing. And yes, PPA is often filed depending on the situations and risk factors, just to get a priority date established with the intention to file a NPA within a year.

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mackieb's Avatar

They say the new laws are a way to help out individual inventors, but to me after reading a lot about them it sounds like they just hurt individual inventors by taking away the 12month first to invent rule. That time period would be helpful for getting public support and investors, and to try out the product and get public opinions! It all just seems like a way for the system to help out the richer people who can afford to go ahead with a full patent up front and a way for them to easily take other peoples ideas since all they have to do is change a few things and say they didn’t take your idea!

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williamj's Avatargold

Peter,

Thank for your response.

Yes, companies sometimes do use simulations. And most companies have something that I don’t have… deep pockets. The only way I could ever claim to have “deep pockets” would be because my pockets would have holes in them.

I look at this in the only perspective I have, that of an individual, an individual with limited resources and often time abilities. As I read through the posts here on E.N. I’m hoping for information that assists the individual.

williamj

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quanedison's Avatar

Hi Peter,

The new law does make it more challenging for the individual inventors with respect to no more 12 month grace period, first-to-file, etc. A little bit of help from the new law is the Micro Entity Status, which significantly lowers the USPTO filing costs. For example, if an independent inventor qualifies for the Micro Entity status, the USPTO filing fees for a provisional application is only $65.

-Quan

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quanedison's Avatar

Hi William,

I meant to address my previous post to you, but typed in “Peter” instead. Coffee is still working its way from my stomach to my brain :-).

Anyways, Peter has some good recommendations (for saving money) on when the inventor may want to file a provisional application when working with EN under confidentiality agreement.

-Quan

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quanedison's Avatar

Hi Michael,

Most excellent question! There are lots of legal arguments on whether or not a secret prior art is patent defeating under the new law. The USPTO appears to be taking the position that an invention would still be qualified for patenting despite a secret prior art. So at some point, there will be litigation on what is “secret prior art” and whether the USPTO interpretation is correct to begin with.

On a related note, under the new law a defendant in an infringement law suit can assert that he is not infringing on a patent because he had prior secret use before the patent application for the patent was filed (with other qualifying conditions).

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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chief's Avatar

Hi Quan, Can you explain this new “no more 12 month grace period” law—the before and after? I am just a little confused. Thanks.

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quanedison's Avatar

Hi Peter,

It’s a very confusing and complicated area of patent law. So here’s the overall picture: in the U.S., prior to AIA (new law), an invention would still be qualified for patenting even after it has been publicly disclosed, sold or offer for sale, or publicly used, but the inventor has to file the patent application within 12 month of the date of such public disclosure, sale or public use of the invention. This is known as the “12 month grace period” because if the invention was publicly disclosed, sold or publicly used for 12 months and one day (i.e., longer than the 12 month grace period), then the inventor would not be able to file the patent application on the invention anymore.

Under the new AIA, there is no more such 12 month grace period. For example, once the invention is shown to the public (i.e., without an NDA/confidential agreement), the inventor cannot file the patent application on the invention anymore.

Under the new AIA, there is a limited one-year (12 month) grace period for both for §102(a)(1) and (a)(2) for “public disclosures” by the owner of the invention, but not for sales or public use. If you are interested, the new grace period appears in the new §102(b), copied below. Let me know if you need more details.

-Quan

(b) EXCEPTIONS.
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
© the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

Any public disclosure as contemplated by §102(b) immediately terminates the inventor’s foreign patent rights.

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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williamj's Avatargold

Thanks Quan,

That was clear as mud (no offense to you). I think I’ll just let the professionals handle the legal aspects of IP. I am way out of my league here and the more I try to understand the dizzier I get.

As much as I enjoy doing everything myself the comes a time when something is better off in the hands of people more capable.

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susanvanvolkenburg's Avatarg8_badge

@Quan, Can you state those exceptions in plain English?

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quanedison's Avatar

Michael’s English version of the exception is spot on. I agree that it becomes problematic when a third party picks up on the disclosure and re-publishes it with additional embellishments. However, in such case, it may be possible for the inventor to argue that the extent of the third party’s disclosure should be limited to just the embellishments and the subject matter that was obtained from the inventor should not count against the inventor. Interesting to see how the courts will resolve this in the future.

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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chief's Avatar

Quan, Thanks for the info. The first to invent rule seems much more straight forward despite the exceptions. My view is that the 12 month grace period rule has its upsides, but downsides as well. And maybe that is why they lower the fee of the PPA to $65 for the micro-entities, to “make it up”. With PPA, there should be much less confusions and disputes. And the first to invent rule aligns with most other countries, which is also good. (I hope we get rid of inch, foot, yard and mile too. But that is a totally different subject.)

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williamj's Avatargold

Quan,

I’m contemplating a “device” that, when used, will have a specific outcome or result. If I disclosed or showed that/those outcomes or results, (without revealing the device) would that constitute public discloser?

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quanedison's Avatar

Hi William,

Here is the old law: an inventor’s own commercial use of an invention, more than a year before the inventor applied for a patent on the invention, qualified as patent-precluding prior art, even if the commercial use did not in effect disclose the underlying invention to the public. Metallizing Engineering v. Kenyon Bearing and Auto Parts, 153 F. d 516 (2d Cir. 1946).

Here is the new law: NOT SURE. It appears, however, that the USPTO interprets the phrase “or otherwise available to the public” residual clause of the AIA’s 35 USC §102(a)(1) to mean that secret use, offer for sale, or other commercial activity does not qualify as prior art. So if the PTO interpretation of the law is correct, then it is possible for an inventor to use a secret commercially important process indefinitely and then to file a patent application only when it becomes expedient to do so.

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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mackieb's Avatar

Hey Quan I have a question for you, Ok say I made an invention publicly disclosed before these new patent laws went into effect. Would my invention be grandfathered into the old patent laws?? I tried my hardest to get my lawyer to hurry up with the patent and all but he just kept giving me the run around and didn’t get it done before the new laws. Kinda hoping there’s some way to protect it still, or may just have to change almost everything about it and try again. What if say I have a board game that includes some concepts from an old board game that was once patented but expired after the 20 year period. Could I re patent that concept with my game that only has a few things in common with the old game. Or can I get just as much protection by copyrighting all the information in the game and trademarking it? Not really sure if you can answer all of that but figured I would try! Thanks

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quanedison's Avatar

Hi Brandon,

The answers to your question will depend on some more specific details. However, here is a general answer: There is a limited 12 month grace period for public disclosure where you will still qualify to file the patent application on the invention. Please see the paragraphs on the public disclosure exception below. So if you yourself publicly disclosed your invention within the grace period, then you may still be able to file a patent application on that invention.

Board games are very difficult to get a patent on. Some USPTO examiners think that board games are unpatentable despite how inventive they are. Others would give you a patent if your board game has inventive physical structures.

Copyrighting can provide for an effective means to protect your board game. You may want to copyright your set of rules, copyright the variations on your rules, copyright the game board itself, etc.

Trademark could be used to protect the name of your board game, not the rules.

Hope this helps.

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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chicagoinventor's Avatarg8_badge

I’ll leave the legal answers to the experts, but be aware that the professional way to approach toy inventing is very different from ordinary inventing.

The life cycle of the typical toy or game is only 1-3 years long, and it takes the USPTO 4-5 years to issue a patent. By the time the patent issues, your successful product would likely be off the shelf already. Toy and game companies actually consider it unprofessional to have a patent on a board game, it labels you as a newbie. Only if you have a technical breakthrough (e.g., better voice recognition for interactive, talking stuffed animal) should you seek patent protection.

Your protection in the toy industry is getting your idea to market 1st and brand loyalty. You could create a game very similar to Sorry, CandyLand or whatever and get away with it. But why would anyone buy a knockoff of the game they really want? Don’t worry about your game being stolen. Game companies don’t make their money stealing ideas, they need relationships with quality game developers because of the high churn rate of their product portfolio.

I suggest you read some books specifically targeted to toy inventors:

The Toy and Game Inventor’s Handbook, Richard Levy
The Game Inventor’s Guidebook, Brian Tinsman
Kobold Guide to Board Game Design

And others.

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quanedison's Avatar

great info. thx Daniel.

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mackieb's Avatar

Ok Thanks Daniel ! By the way, what does registering the domain name really protect? Also is that enough protection for a board game and would companies consider that as acceptable protection to move forward with your game?

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quanedison's Avatar

Hi Brandon,

Registering a domain name can may be helpful on the trademark front for protecting the name. The best way to protect a name is to register a trademark for the name.

To protect the game rules and print appearance, the inventor can register the copyright.

-Quan

This article is intended to be general information and nothing in this article constitutes legal advice. Please consult with an attorney before making intellectual property decisions.

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chicagoinventor's Avatarg8_badge

Registering a domain name is affordable and is a professional thing to do. If you have a name you think is perfect for your game, register it. Trademarks are very different from patents, but buying the domain name definitely helps with the trademark part of intellectual property. What I’m encouraging you not to do is spend 5 figure money on a patent that might not give you the protection you thought it would.

Of course, if you licensed the game, you’d sell them the domain name to your partner for $1.

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quanedison's Avatar

Hi John,

Thank you for thinking and commenting on this very important subject.

Let’s start here, and see if we can agree on the following re AIA:

1. public use = no grace period. Bar to patenting

2. public sale = no grace period. Bar to patenting

3. public disclosure = 1 year grace period if disclosure is by inventor or the disclosed content by third party is derived from the inventor. No grace period otherwise and is bar to patenting

4. secret use = USPTO position is that secret use or trade secret subject matter is patentable. However, this USPTO position is untested by the courts and we will have to see how the law will develop with respect to secret use

Let me know which of the above items you may disagree with.

Respectfully,

-Quan

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chief's Avatar

Hi John,
Allow me to chime in. Based on the definitions put forth by Quan, the key seems to be “public use” or “public disclosure”. I dug out an old court case where the words “public use” was defined, so did “prototype” usage. Here is a quote:

The meaning of “public use” does not hinge on whether the device was seen by others. “Public use” includes “any use of the claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor”

Based on this, if you yourself use it in “public”, whether it is seen or not, you may still have the grace period. But if others use it without the inventor’s authorization and/or strict control, then it is not OK. Interestingly, this distinction is similar to the terms that defines the Public Disclosure. Public use or public disclosure, the spirit seems to be the same. As long as you can prove that the product is “secretly used in public”, you are OK. I know I might be making it more confusing. But a strict control (secrecy) is the key and being seen or not is not so much of a deciding factor as far as the grace period is concerned.

Now I am not sure if the new first-to-invent law affects those definitions. And my interpretation could be wrong. Read the link by yourself:

http://ocpatentlawyer.com/public-use-bars-paten...

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quanedison's Avatar

Hi John,

Thank you for taking time to research this. It’s beneficial for the forum members to be aware of what can affect patentability. There are lots of concepts here: experimental use, public use, offer for sale, etc. For ease of understanding, let’s analyze one concept at a time starting with the language of the law itself.

Below are the relevant parts of the new law (AIA) with the underlining, and the old law (pre-AIA) with the strike-through. First, it is important to note that “described in a printed publication”, “public use”, and “on sale” are all different and separate concepts. Also, “described in a printed publication” includes “public disclosure”. Second, being that they are different and separate concepts, the analysis for each of them must be performed independently and separately.

With that said, take a look at the crossed out old law. Notice that the old law allowed for a one year grace period for “described in a printed publication…, or in public use or on sale”.

Now take a look at the new law. Notice that the new law does not have any provision for a one year grace period, except for the narrow exception of public disclosures that was by the inventor or by a third party who obtained the subject matter from the inventor. Also, notice that there is no grace period recited for “public use” or “on sale”.

Respectfully,

-Quan


35 U.S.C. 102 Conditions for patentability;

[NEW LAWALL TEXT BELOW UNDERLINED]
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or


[OLD LAW BELOW]

A person shall be entitled to a patent unless -

[ALL TEXT BELOW CROSSED OUT]
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

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mackieb's Avatar

Wow this is quite the conversation going on here! Thanks for the info though, its really helpful since you cant find this kind of information without doing a lot of research!

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loganwgood's Avatar

Hi Quan,

Thank you for all of the great information. I am glad I read this before spending any time sending myself mail.

To add to the discussion, does the public use come into effect when the conceptual design was presented at a design week?

Best,

Logan

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