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Co-invented provisional and USPTO online account
Posted by Anonymous . updated on 2/26/2009
I have filed a provisional online, at USPTO, in collaboration with another inventor. Since I was not familiar with the system, the other inventor was the one who opened an online account and submitted the provisional under his account and signature (while including both our names and details). I have some question about my current status:
1. What are my rights as a co-inventor of a provisional filing, and what happens if I unilaterally act in a way that might affect the rights of the other co-inventor?
2. What is the difference between filing a revision to a provisional, and filing another provisional containing some of the same elements as the former provisional? What are the benefits of filing a new provisional, except for the later priority date?
3. When one of the inventors submitted the provisional online, under his account, with his signature (while including the details, and only the details, of the other inventor), can the second inventor make changes, or file revisions without the consent of the inventor that originally submitted the original provisional? Can the inventor who submitted the provisional transfer it from his/her account to the other inventor?s account?
4. How many revisions can one submit to a provisional? Why not just send as many revisions as possible, so to insure higher chances for a good draft?
Thank you,
S
Answers (6)
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Bill Ri...
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Quote from: saarshai on 01-11-08 at 05:48 pm 1. What are my rights as a co-inventor of a provisional filing, and what happens if I unilaterally act in a way that might affect the rights of the other co-inventor? You have equal rights in the application. Be aware, however, that inventorship is (1) a sometimes complex determination and (2) cannot be fully determined until issue with allowed claims. Beyond that, I'm not sure what kind of unilateral actions you're thinking of.
2. What is the difference between filing a revision to a provisional, and filing another provisional containing some of the same elements as the former provisional? What are the benefits of filing a new provisional, except for the later priority date? You cannot file a revision to a provisional, you must file another provisional.
3. When one of the inventors submitted the provisional online, under his account, with his signature (while including the details, and only the details, of the other inventor), can the second inventor make changes, or file revisions without the consent of the inventor that originally submitted the original provisional? See above. Moot point.
Can the inventor who submitted the provisional transfer it from his/her account to the other inventor?s account? No, but each inventor can have access.
4. How many revisions can one submit to a provisional? Why not just send as many revisions as possible, so to insure higher chances for a good draft? See above. Moot. Plus, that's one of the problems of a provisional. You're stuck with what you file. If it doesn't meet all the statutory requirements, it will be worthless for a filing date.
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oddtime...
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Thank you, william...
The thing is this... I was the one who invented the invention, but since I has no experience in these matters, my co-inventor took it on him to file the provisional. Now I'm starting a company based on this provisional, which will be further edited by a patent editor...
Since the first filing date, I have added many elements, some of which were filed as a revision to the original draft. Yet I have more, some of which overlap the already filed provisional...
What I wonder is:
1. If my co-inventor signs an agreement forfeiting his share in the provisional for a smaller share in the company - how can I get control of the provisional (not just legally but also technically - how can I grant direct access to my patent editor for further revisions)?
2. What happens if I file a separate provisional which has elements that already appear in the original provisional?
3. Since I'm not a major company with a development center, I'm very concerned about protecting my provisional as much as possible... one way, I thought, was to file many drafts of the same concept, hoping that one of them will hit the spot. I know that each of these revisions would have its own priority date (much like my first filing had the earliest priority date... but maybe wasn't as well crafted as will the drafts my patent editor would produce), but if these dates are closely related, wouldn't this give me more protection?
Thanks again,
S
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Bill Ri...
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Quote from: saarshai on 01-12-08 at 05:02 pm I was the one who invented the invention, but since I has no experience in these matters, my co-inventor took it on him to file the provisional. If you're the one who invented, how can this other person be a co-inventor??
Now I'm starting a company based on this provisional, which will be further edited by a patent editor... Remember that a provisional application is nothing until you file a non-provisional within one year. What's a patent editor? If you mean a patent practitioner (attorney or agent) then he can help you sort out these issues.
Since the first filing date, I have added many elements, some of which were filed as a revision to the original draft. It is impossible to file a revision to the original draft. At best, you could file another provisional.
1. If my co-inventor signs an agreement forfeiting his share in the provisional for a smaller share in the company - how can I get control of the provisional (not just legally but also technically - how can I grant direct access to my patent editor for further revisions)? That may be possible, but your attorney can better advise you and prepare the necessary documents. If you're an inventor, you have a share in the provisional already. Absent legal action, it is unlikely you'll get access to view the provisional. Why do you even want to?? Do you not know what's in it? I suggest you get legal representation as these may be complex issues.
2. What happens if I file a separate provisional which has elements that already appear in the original provisional? You can certainly do that, but, if he's an inventor, he'll have rights in your application, too. Plus, the earlier provisional has an earlier filing date, which is an advantage.
3. Since I'm not a major company with a development center, I'm very concerned about protecting my provisional as much as possible... one way, I thought, was to file many drafts of the same concept, hoping that one of them will hit the spot. From what I've seen, this may be a waste of time. I don't think you understand the workings of provisional filings. You really do need competent legal representation.
I know that each of these revisions would have its own priority date (much like my first filing had the earliest priority date... but maybe wasn't as well crafted as will the drafts my patent editor would produce), but if these dates are closely related, wouldn't this give me more protection? Again, you're confusing yourself with how provisionals operate. And, it's impossible to address your questions in the abstract.
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oddtime...
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William, your help is much appreciated. I will try to make things more clear. There are two separate issues:
1. I had a concept which I developed. My co-inventor didn't come up with the idea or help to develop it, but he supported me through the process, and also the one who actually filed the provisional online. We are both listed as inventors, but it was filed under his account and signature. As to a verbal agreement between us (which I intend to respect), he has 25% of the provisional due to his assistance. Now I have come up with enough funds to start a company and push this thing further... Obviously, he is not entitled to 25% of the company, and we are trying to reach a fair amount of shares for him. Nonetheless, currently he has control of the account under which the provisional was filed, and I wish to transfer it so that it will be under my control, meaning that me and my patent editor will be the ones who will file future revisions without going through him.
a. How is this possible, if at all?
b. Can you give me any advice as to how to calculate my co-inventor's relative share in the company, accounting the 25% he has in the provisional? what is acceptable or conventional?
c. If we would not reach an agreement between us (per his refusal to any of my offers), can I still go forward with developing my company, and at worse pay him some compensation later on?
2. The provisional was developed by me under my co-inventor's supervision, who has much experience in filing patent. Even so, and even while I invested a lot of research, effort and time in drafting the text and diagrams, I am not a professional. Currently, my entire company is based on this provisional, and my strategy is to raise capital with respect to it. It is clear then, that I have to protect my invention as much as possible, so that even if I meet with beneficiaries and other parties and expose my idea, they will not be able to copy it, or bypass me by filing a "stronger" application. As said, I have a priority date from about 6 month ago, whereas a revision to the same provisional was filed a month ago. Now I intend to hire a patent editor (attorney) to "beef-up" the application, yes I know that even a professional treatment isn't a sure thing, and I want to know everything I can do to have the best application I can.
a. What advices can you dispense to help me protect my provisional as much I can, and have it drafted as best as possible so that it will not be bypassed, blocked or dismissed by other parties with more resources?
b. Besides a patent editor, what are the advisable next steps to insure my right over my idea? Strategically, I was thinking about filing for PCT near the provisional expiration date, so to get an "extension", until I get enough funds to file a national patent application? Is that the right thing to do? What other measures are available at relative low cost?
Thank you,
S
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Bill Ri...
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Your situation is complex and should be kept confidential. I suggest you engage competent legal assistance.
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oddtime...
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I have not revealed too much information, I hope...
I'm just seeking answers to the questions I've posed, which by themselves are general in nature... My main concern is the second section, and the ways I can protect myself and my invention as best I can, other than hiring a patent editor and filing an edited version of my original provisional.
Much appreciated,
S
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