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Am I Protected To License My Idea?

Patents & Trademarks Discussion Forum

Am I Protected To License My Idea?

Postby Nawat » Tue Nov 22, 2016 8:41 am

Hi Marty thanks for your valuable advice to new inventors such as myself.

I have been using a technique for almost three year but never thought of inventing it until a month ago. my first step was to do a market search, then patent search on my own and to create a provisional patent application with uspto which I did on my own(not sure how accurate it is though). step 2 was to make a professional prototype(using an nda to protect my idea). Now, I am contacting large companies to see if I can present and license the product to them which I still haven't heard back. My questions are: 1. is my product patent pending right now even though I still haven't heard back from uspto.

2. if I don't use an NDA when presenting my idea, am I risking anything(losing my rights or do I have any rights at all right now to my product at least for another 10-11 months)

3. If I file for a utility patent app.(non-provisional), am I then protected right away to present my idea to companies without the use of an nda(a lot of large companies won't sign an nda).

4. what's the difference between patent pending with a provisional application vs. Patent pending with a non-provisional patent application.

thank you in advance.


ANSWER: Hi Sanja;

You are well on your way.  I appreciate inventor like yourself that take the initiative and venture out on their own investing effort, passion and their own ability to learn.  

To answer your questions:

1) "Patent Pending"  YES, it is patent pending.  See information below found at:http://www.uspto.gov/web/offices/pac/provapp.htm

A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure(prior art) statement. It provides the means to establish an early effective filing date in a later-filed non-provisional patent application filed under  35 U.S.C. § 111(a). It also allows the term "Patent Pending" to be applied in connection with the description of the invention.

A provisional application for patent(provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent(non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. § 119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application within the time period and in the manner required by 37 CFR 1.78. 2)If possible, you ALWAYS want to use an NDA.  You do have rights for the next 10-11 months as 'Patent Pending.'  Although; you may know this already, you have to file the full patent within that 10-11 months.

3) If your utility patent corresponds with your provisional, then you will receive effectively 21 years of protection from your patent because your provisional can be included with your full patent filing.  What I would suggest Sanja is calling the USPTO and finding out the status of your provisional application and asking them what the exact date of protection is.

4) There is no difference.  One is patent pending with a provisional the other is patent pending with the full patent.  Patent Pending is the same no matter how you cut it.

I hope this information helps Sanja.  If you have other questions, please ask.  Thanks for your inventive efforts.

All My Best;

Marty McCrea

---------- FOLLOW-UP ----------

Dear Marty, thanks for your response to my question. however, I have another problem now: any manufacturing company that I call, is not ok with non-disclosure agreements. I thought of going to a trade show but still if I want to use the NDA, I might have the same problem! any suggestion? thanks again...
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Am I Protected To License My Idea?

Postby Dewey » Wed Dec 14, 2016 4:10 pm


Ask them what they use in place of a NDA.  Also a good question when they say they don't sign NDA's is....WHY? The answers will be interesting, to say the least.  

So what I would suggest is narrowing your list down to 3 manufacturing companies.  Then as you talk to one of them tell them that you are also talking to company 2 and company 3, let them know that you are shopping around.  See what kind of deal they give you.  

Also, what you might want to do is look into getting a provisional patent.  This is a mini-patent that is good for 1 year from the filing date.  There are some very specific stipulations that are associated with provisional patents so please do your homework and research on them before you apply for a patent.  For more information about these please visit here:http://www.uspto.gov/web/offices/pac/provapp.htm

Most manufacturers are pretty honorable.  What I would do is check them out on the better business bureau.

I hope this information was helpful.  If you have any other questions, please ask.  Thanks Sanja.

In Inventive Unison;

Marty McCrea
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Joined: Fri Jan 03, 2014 8:36 am

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