Start production without a patent

JSonnab...

Alex -

From your post, I think you have some basics about the patent system wrong (e.g., that someone avoids infringement by "changing a couple of nuts", or that the patent does nothing other than providing the patentee with "a nice piece of paper to hang on the wall").  Rather than presenting a patent law primer, I'll simply suggest you contact a qualified patent attorney to discuss the matters.

In short, though, you should assume that you will not be able to obtain patent protection  once your product has been in public use more than a year.  Also, you may consider that trade secret protection, while often valuable, does nothing to stop people from reverse engineering your product.  That's something to consider, I think, if your invention relates to internal combustion engine technology or the like.

- Jeff

Alex

Jeff, thanks for the comments.

I'd like to just a little clarify the situation.

First of all, automotive <-> oil industry is very specific area, let say forbidden for some innovations. It is not just my words, it is my experience. And I'm not in a position to launch a war, and I don't want to do it because I'll be dead. So, my aim now is to get an initial market and public-practical approval. I really don't worry about reverse engineering, the most of IP is in a well closed chip, to open it you have to spend at least half a million. But on the other hand, if somebody want to get it, it means the technology is worth it. But anyway the key (theory) is in my hand, and I'd like to play this game as long as it's necessarily.

I've got many and very different suggestions, and from professionals too. I'm not waiting for "what exactly to do".  I'm very interested in overall opinion of this community, and believe it will be useful for other people in a discussion.

Thanks in advance,
Alex

JSonnab...

I'm glad to hear you've been in consultation with professionals on this.  To the extent that your invention includes copy protected technology contained in a computer chip, the DMCA may provide you with some protection -- at least in theory -- against reverse engineering.

I'm not sure what you mean by "you'll be dead".  Contrary to popular belief, the little guy can take on the big guys and win.  It just takes a good patent, a good attorney, and perseverance.

- Jeff

Alex

Jeff, "I'll be dead" is only expression, nothing frightened. I mean it just regarding to idea.

Unfortunately not everything in this world goes by low and conventional rules. Don't want to tell my personal story, just by the way, this is a second attemption to get in life this technology. At those time I dropped everything from small production stage, and changed my field of action for many years. I had a reason to do that.

And now I don't want to make same mistakes, and am going to do it quietly up to right time and place.

So, get back to the topic. Let say, I have proven technology which can be protected electronically for some period of time. I want to start  the production without patent application, and to watch for the situation when I'll really need it. The product will go with no advertising through limited community of the consumers with special terms of using it.

What is my risk on that?

Thanks,
Alex

JSonnab...

Once you have released the techonology to the public, even if it is contained in a copy protected chip, you're risk of being barred from obtaining patent protection is very high unless you file your application within a year of that initial release to the public.

Alex

Thanks, Jeff.

Sure, I very understand that everything should be done in one year from the public disclosure. The main point is to hold some secrets for a while up to I'll be really need to open it and applying for the patent.

My other question, how long does USPTO hold the application before it goes to the public?

Thanks,
Alex

Patent

One of the things a good patent attorney/agent would do is to write the claims in the most broadest meaning. If you work with a good patent attorney (assuming you are granted a patent), it should in theory cover more than what you are trying to hide.  It would be written in such broad language that changing a nut or bolt would not prevent someone from infringing the patent.  That can be done only when the claims themselves are pretty narrow to begin with.

One draw back of patents is that it is for a defined period of time and hence if you think the technology you developed is such that no one can reverse engineer for next 20 years or so, then there might be some advantage in not disclosing the technology. But, as a scientist myself, with highly competitive world, I would not count that myself.

Another scenario, that it might not be good to patent is that if you have developed a "scientific principle" which is not patentable. Then you would be giving away the principle by filling an application but end up without a patent protection to the "scientific principle".

Remember, that this is not a legal advise and only my opinion.

Alex

Thanks, Patent.

You are right. I called all these things as the technology because there is not an idea only or some simple mechanism. If take it apart, there are scientific principle (calculus, experiments, theory) which is not patentable, and hardware algorithm (electronic device) which allows to realize this principle in practical way. On the other hand, the device contains secured chip with most of control algorithms, and external circuit accessible for everybody who has the device. Even you have it opened you'll be far from replicating this without understanding the details (theory and controls) because the system is very dynamic.

The only my concern is those external electronic algorithm, it is for sure patentable, and can be used even for different purposes. It is what I actually want to patent, but no more, maybe for a while. I don't worry if somebody will use it, I worry if this somebody is going to make a patent to infringe on me.

And again, what is my risk if I start the production without a patent, let say for half a year, and then apply for it. Is it possible that somebody can get a patent for device that is not widely advertised, but in public production starting much early???

Thanks,
Alex

JSonnab...

Alex, unfortunately Patent is wrong in just about everything he said.  

A good patent attorney will draft claims beginning with very broad claims and gradually narrowing to narrower claims.  The reason for this is simple: broad claims stop more potential infringers but are more succeptible to invalidity attacks.  The inverse is true for narrower claims.  

As for "holding back" secrets from a patent disclosure, doing so is a recipe for disaster.   The quid-pro-quo for the patent monopoly grant is that the inventor advances the state of the art by fully disclosing his invention.  This principal is codified in section 112 in the enablement and best mode requirements.

As for "developing" a "scientific principle", scientific principles are not "developed", they are discovered.  If your invention applies a newly discovered scientific principle to achieve some useful result, then your invention is protectable subject matter.

To be blunt, if you're serious about protecting your invention, either through trade secret or patent law, you need to speak with an attorney.  If you've done that already, I'm not sure why your seeking a second opinion (or opinions) here.  One opinion from an attorney you trust is all you need.

- Jeff

pzura

Jeff is absolutely correct.  By discounting your patent rights, you stand to potentially lose everything down the road.  Think of it this way - by not patenting, you are serving as an R & D outpost for all your competitors, or anyone else that wishes to profit from your ideas/concepts.  As Jeff said, you should speak to a registered patent attorney about the specifics if you are serious about protecting your device.

If you want to wait a year before filing for a patent in the U.S., that is certainly a viable option.  Some inventing entities like to market-test products before filing for any patent protection (often referred to as "reactive patenting").  The advantage here is that you can fiddle with the invention and possibly discover other useful features you didn't originally know.  However, keep in mind that under foreign law (e.g., Europe), you lose your rights to a patent the moment your invention is disclosed or sold.  So if you have any inclination to file for patent protection abroad, you'd better get something on file as soon as you can.  Also, you need to keep VERY close tabs on what you disclosed to other people and when.  The one-year time limit starts from the moment you disclose your invention - not necessarily when you start selling or using the invention.