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I'm okay with this. I'm in the process of getting a provisional patent for something fairly trivial, simply to make sure that the Principal Investigator for th

I'm okay with this. I'm in the process of getting a provisional patent for something fairly trivial, simply to make sure that the Principal Investigator for the project on this project doesn't take credit for it (before I get downvoted: the PI told me "I need a way to do this thing, and I have no idea how to do it" and I did all the R&D, paid for the prototyping, and I am volunteering my contributions in the first place). I'm noticing that it is extremely unlikely that an actual human being will read my application, and would actually like to have it rejected for being trivial, because it'd mean some checking is going on. I feel this is a mild abuse of the provisional patent system, but what can I do? I wonder if anyone tried to patent the old Signetics write-only-memory, if it would go through? Someone patented the wheel in Australia a while ago...

pwg 12y ago
> I'm in the process of getting a provisional patent ... would actually like to have it rejected for being trivial Note that provisional patent applications are not examined, so if indeed you are applying for a provisional, it will never be "rejected". Source: http://www.uspto.gov/patents/resources/types/provapp.jsp http://www.uspto.gov/patents/resources/types/provapp.jsp > (from link above) provisional applications are not examined.
ihnorton 12y ago
> I feel this is a mild abuse of the provisional patent system, but what can I do? Really any traceable, public disclosure should do - filing a patent just to have the record seems like overkill (except in the case where you actually want to file the patent, but it sounds like not). Actually, if it is just for date priority purposes, getting your research records notarized would probably be sufficient (not a lawyer and all that). There is a service [1] for registered public discloure that is also a "mandatory to search" resource with the WIPO. It costs $120/page, which is steep, but surely cheaper than patent prosecution. There are other "mandatory search" archives [2] under the Patent Cooperation Treaty "Minimum Documentation" rules, many of which are academic journals. These are not the only means of "public disclosure" but my (very limited) understanding is that the patent office is guaranteed to look at the sources on that list. If you are feeling adventurous, you could even use some block chain-based registration service [3]. [1] http://www.researchdisclosure.com/publishing-disclosures http://www.researchdisclosure.com/publishing-disclosures [2] http://www.wipo.int/standards/en/part_04.html http://www.wipo.int/standards/en/part_04.html [3] https://news.ycombinator.com/item?id=6809929 https://news.ycombinator.com/item?id=6809929
- thirsteh 12y ago
  I wonder if this is still true after the switch from first-to-invent to first-to-file.
  - deleted 12y ago
    [deleted]
  - noonespecial 12y ago
    It absolutely is. Once recorded, it becomes prior art. The disclosure would be the "first to file" event in this case. First to file would actually prevent someone else from later coming along and claiming that despite your publishing of the technology, they were the first to have the idea so should get a patent anyway.
    - thirsteh 12y ago
      Interesting.
  - rayiner 12y ago
    First to file is just a conflict resolution rule for patent applications that hit the PTO at the same time. Under first to file, you just look at the dates on the applications to see who gets priority. Under first to invent, you get into this fact-intensive analysis of who really invented first. First to file is not implicated unless dueling patent applications are involved. It doesn't affect how prior art is treated.
ChuckMcM 12y ago
So I'm going to step sideways here and comment on this: "simply to make sure that the Principal Investigator for the project on this project doesn't take credit for it"" Think about that a bit with a longer view. If it is "fairly trivial" as you mention, the PI could have brought in anybody and had them build it, and had they not brought in you, you would not know anything about this thing you're patenting. I get that you feel like you have "done all the work", and I think that may be true, but at a minimum I would suggest you put both you and the PI on the patent if it is not something you would have done on your own. It sounds like the "combination" was what got the patent done, not just your own work. The second thing is that when this patent issues or comes back, if it has only your name on it and not that of the PI, it is going to really piss off the PI. And if the PI has any sort of professional network, they are going to complain loudly about how you "ripped them off" and that story will follow you around and dampen your employment prospects for years. (After all, who wants to hire someone who will sneakily take credit for all the work?). And as the system is set up to allow additional inventors to be added later the PI will probably get themselves added anyway. The bottom line is this, don't let your emotions push you into making a choice that you may later regret.
throwawaykf05 12y ago
It's not really an abuse, since that's essentially what a provisional patent is: a placeholder for your future claim. It gives you a year to decide if you want to follow up with a non-provisional patent. But be aware that the provisional will not do what you want... if I understand correctly, unless you follow up with a non-provisional patent, your provisional will not count as prior art. Or proof that you should be credited. In fact, it may as well not exist. That is because it is never published. IANAPatentAttorney/Examiner so some confirmation from one would be good. Your options now are to either publish it somewhere it counts, or file a non-provisional and then abandon it. (Edit: or see it through; either way it's gonna cost something. Also remember, patent laws are such that if you only implemented it but did not conceptualize it, the PI may be the true inventor. Also, TINLA.) Also, the "wheel" patent in Australia is something along similar lines. It's a placeholder patent that is never examined, so you can file one for whatever you want. It's only when you want to enforce it that it must be examined and proven valid.

pwg 12y ago

> I'm in the process of getting a provisional patent ... would actually like to have it rejected for being trivial Note that provisional patent applications are not examined, so if indeed you are applying for a provisional, it will never be "rejected". Source: http://www.uspto.gov/patents/resources/types/provapp.jsp http://www.uspto.gov/patents/resources/types/provapp.jsp > (from link above) provisional applications are not examined.

ihnorton 12y ago

> I feel this is a mild abuse of the provisional patent system, but what can I do? Really any traceable, public disclosure should do - filing a patent just to have the record seems like overkill (except in the case where you actually want to file the patent, but it sounds like not). Actually, if it is just for date priority purposes, getting your research records notarized would probably be sufficient (not a lawyer and all that). There is a service [1] for registered public discloure that is also a "mandatory to search" resource with the WIPO. It costs $120/page, which is steep, but surely cheaper than patent prosecution. There are other "mandatory search" archives [2] under the Patent Cooperation Treaty "Minimum Documentation" rules, many of which are academic journals. These are not the only means of "public disclosure" but my (very limited) understanding is that the patent office is guaranteed to look at the sources on that list. If you are feeling adventurous, you could even use some block chain-based registration service [3]. [1] http://www.researchdisclosure.com/publishing-disclosures http://www.researchdisclosure.com/publishing-disclosures [2] http://www.wipo.int/standards/en/part_04.html http://www.wipo.int/standards/en/part_04.html [3] https://news.ycombinator.com/item?id=6809929 https://news.ycombinator.com/item?id=6809929

thirsteh 12y ago
I wonder if this is still true after the switch from first-to-invent to first-to-file.
- deleted 12y ago
  [deleted]
- noonespecial 12y ago
  It absolutely is. Once recorded, it becomes prior art. The disclosure would be the "first to file" event in this case. First to file would actually prevent someone else from later coming along and claiming that despite your publishing of the technology, they were the first to have the idea so should get a patent anyway.
  - thirsteh 12y ago
    Interesting.
- rayiner 12y ago
  First to file is just a conflict resolution rule for patent applications that hit the PTO at the same time. Under first to file, you just look at the dates on the applications to see who gets priority. Under first to invent, you get into this fact-intensive analysis of who really invented first. First to file is not implicated unless dueling patent applications are involved. It doesn't affect how prior art is treated.

ChuckMcM 12y ago

So I'm going to step sideways here and comment on this: "simply to make sure that the Principal Investigator for the project on this project doesn't take credit for it"" Think about that a bit with a longer view. If it is "fairly trivial" as you mention, the PI could have brought in anybody and had them build it, and had they not brought in you, you would not know anything about this thing you're patenting. I get that you feel like you have "done all the work", and I think that may be true, but at a minimum I would suggest you put both you and the PI on the patent if it is not something you would have done on your own. It sounds like the "combination" was what got the patent done, not just your own work. The second thing is that when this patent issues or comes back, if it has only your name on it and not that of the PI, it is going to really piss off the PI. And if the PI has any sort of professional network, they are going to complain loudly about how you "ripped them off" and that story will follow you around and dampen your employment prospects for years. (After all, who wants to hire someone who will sneakily take credit for all the work?). And as the system is set up to allow additional inventors to be added later the PI will probably get themselves added anyway. The bottom line is this, don't let your emotions push you into making a choice that you may later regret.

throwawaykf05 12y ago

It's not really an abuse, since that's essentially what a provisional patent is: a placeholder for your future claim. It gives you a year to decide if you want to follow up with a non-provisional patent. But be aware that the provisional will not do what you want... if I understand correctly, unless you follow up with a non-provisional patent, your provisional will not count as prior art. Or proof that you should be credited. In fact, it may as well not exist. That is because it is never published. IANAPatentAttorney/Examiner so some confirmation from one would be good. Your options now are to either publish it somewhere it counts, or file a non-provisional and then abandon it. (Edit: or see it through; either way it's gonna cost something. Also remember, patent laws are such that if you only implemented it but did not conceptualize it, the PI may be the true inventor. Also, TINLA.) Also, the "wheel" patent in Australia is something along similar lines. It's a placeholder patent that is never examined, so you can file one for whatever you want. It's only when you want to enforce it that it must be examined and proven valid.