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 first to invent and prior art question. 
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Joined: 2012-03-30 18:34:21
Posts: 4
In the first quarter of 2009 I filed a provisional application for an invention. By the first quarter of 2010 the wording in the provision application needed to be changed and the provisional was abandoned since the utility application was not filed within the year. Product was already being made and sold. During the 3rd quarter of 2010 another provisional application is filed for the product with the correct wording and in 2011 the utility application was filed referencing the 3rd quarter provisional application filing date. I am currently awaiting publication.
My understanding is that under first to file I am allowed to offer the product for sale 1 year prior to the filing of the provisional without losing my patent to prior art. Prior to the 3rd quarter of 2010 filing of the provisional application the product was still being offered for sale but the product has been offered for sale now for 18 months. A competitor comes out with a functionally similar product I believe would infringe if the patent is granted. The competitor came out with the product 3 months after my 3rd quarter of 2010 filing date of the provisional application.
I have 1 question I can't seem to find clarification on. Since the law changed from "first to file" to "first to invent" does that change the 1 year rule of offering the product for sale prior to the patent application date. Is prior art, due to production of this part, going to make the patent unenforceable if the patent is granted under "first to invent". While I filed the applications while the law was "first to file", should the patent be granted, it would become a patent under the "first to invent" rule.


2012-03-31 02:18:34
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Joined: 2012-01-20 17:49:57
Posts: 67
Three clarifying questions (since you have multiple provisional filed):

1) Are the elements of your claimed invention captured in the first provisional filing (only), the second provisional filing (only), the non-provisional filing (only), or in multiple filings (and if in multiple, which earliest filing)?

2) What is the actual date of first sale?

3) What is the actual date of first offer for sale?

Please note that the change to first to file does not currently affect you (the affecting date for new filings is in 2013).
The year bar date (sale or offer for sale) would seem to be your most pressing concern.


2012-03-31 13:30:33
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Joined: 2012-03-30 18:34:21
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There are no elements captured in the first provisional (filed 15-FEB-2009) or second provisional filing (filed 01-AUG-2010). The elements are included in the non provisional only that was filed in July of 2011. The actual date of first sale was July 10th, 2009. The actual date of first offer to sell is unknown except to say that it is prior to that and was for the invention described in the first provisional (I know that's a stretch but worth mentioning for information sake) . The best information I could find is that it would have been a few weeks before. Also, am I understanding correctly that the first to file affecting date is for patent applications filed in 2013 and not granted in 2013? There is a good possibility that the patent, if granted, would occur in 2013.


2012-03-31 15:22:50
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Joined: 2012-01-20 17:49:57
Posts: 67
asd,

If your first sale was July 10, 2009 and your provisional filing for which you can claim priority was filed August 01, 2010, you have violated the one year on sale bar. :shock: This is a statutory bar for which there is no fix. Are you sure that the product sold reads on your claims? Do you have claims that capture more? Do you have a second generation product that would not be obvious over your own first generation product?

Keep in mind this is a blog and my comments do not constitute legal advice.

If I were in your shoes, I would want to obtain true legal advice.


2012-03-31 23:37:49
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Joined: 2012-03-30 18:34:21
Posts: 4
E C wrote:
If your first sale was July 10, 2009 and your provisional filing for which you can claim priority was filed August 01, 2010, you have violated the one year on sale bar. :shock: This is a statutory bar for which there is no fix. Are you sure that the product sold reads on your claims? Do you have claims that capture more? Do you have a second generation product that would not be obvious over your own first generation product?

Keep in mind this is a blog and my comments do not constitute legal advice.

If I were in your shoes, I would want to obtain true legal advice.


No, the product is technically different and a second generation technical change was the purpose behind the second provisional and subsequent application to take those differences into account. I don't know "how" different it has to be (looks vs. technical description vs. function) but I suppose that will be argued. The first sale was based on the initial product represented by the first provisional. The second design does fall within the one year rule. I'm not sure if the change in description between the first and second provisional means much since the product looks similar but the technical descriptions are different enough to pursue a second provisional, and subsequent application, to describe that difference. I am hoping that since there are many mouse trap patents, the technical difference of how it works takes precedence over how it looks when it comes to the one year rule.
I will obtain legal advise shortly since I will be notifying the competitor of the patent application being published. No sense in not seeing it through to the end.


2012-04-01 01:37:58
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Joined: 2012-01-20 17:49:57
Posts: 67
:D

Good! So when was the first sale/offer for sale of the second generation product? (and how it "looks" is immaterial - the technical advance will be the driver). However...

Quote:
I don't know "how" different it has to be (looks vs. technical description vs. function)


A very good question given the empowerment of PHOSITA in KSR. And is key to the differentiation from your own product. Perhaps other commentors can add some weight to the level of difference necessary to set your later work apart from earlier work.


I hope the best for you.


2012-04-01 10:49:32
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Joined: 2012-03-30 18:34:21
Posts: 4
The first sale/offer for sale of the second generation product was after the provisional was written.

Thank you for your help.


2012-04-07 16:21:21
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