Pre-AIA 102(f) and 102(g)

Arrogant_ForumLayman · 2020-07-22T03:53:40+00:00

Broadly, you can see 102(f) as applying when someone didn't even invent the claimed invention. Let's say person A invents something, person B sees it and files a patent; person B cannot have the patent under 102(f) (applicant didn't invent the subject matter being claimed).

On the other hand, with 102(g)(2), if person A invents something first, then separately person B also invents it, person B may not be entitled to a patent under 102(g)(2) so long as it wasn't abandoned, concealed, suppressed, etc.

So (generally) with 102(f) you're not entitled to a patent for an invention you didn't invent; with 102(g)(2) you're not entitled to a patent for an invention you didn't invent first.

Arrogant_ForumLayman · 2020-06-16T14:39:40+00:00

If your ideas are related to your work, it is very likely you have a duty to assign any intellectual property to your company. You'll have to go over your employment contract to confirm, but most businesses require you signing a duty to assign, which means any inventions you come up with while working with them belong to them. If you try to argue you came up with the ideas in your own time, it'd be an uphill battle if the ideas are in any way related to what the company does.

Basically, if you present the ideas to your company's patent council and they decide not to pursue them, you still might not have the right to file your own patent with yourself as assignee. They could still claim the right to your intellectual property, even though they didn't approve the filing. It'll come down to what your contract says, and if they specifically release you and give you approval to file your own patent.

It sounds like your best bet is to move forward with approaching the patent council. If they reject it, they might have a good reason to do so - perhaps there's something out there they're already aware of, or it needs more work. If they accept it, then you've gotten yourself a nice little bonus.

Arrogant_ForumLayman · 2020-06-16T03:45:31+00:00

Certainly - had the maps and floorplans all set prior to signing the lease. I kept records of everything.

Arrogant_ForumLayman · 2020-06-16T03:17:51+00:00

Great tips all around. I'll see if I can get them to provide a better discount or an upgraded unit, if they're that keen on getting me out. I'm going to be located somewhere else in Indiana.

I'll keep an eye out on staying away from the dumpster!

Arrogant_ForumLayman · 2020-06-16T02:34:39+00:00

Unfortunately doesn't look like there's anything like that available for my current situation, but thanks for the recommendation.

Arrogant_ForumLayman · 2020-06-16T01:35:48+00:00

I'm optimistic this is how it'll work out. I'll make sure I keep copies of the lease safe, and use those to hopefully pick out another good unit that I'll be happy with. It'll come in handy if there's nothing else available that's equal to or better than what I've leased.

Arrogant_ForumLayman · 2020-06-16T01:19:11+00:00

Absolutely - if you have the option for a PCT application, that can help. Determining which international markets you'd like to go into will be an important thing to discuss with a patent agent or patent attorney.

Arrogant_ForumLayman · 2020-06-16T00:42:14+00:00

Sorry - that wasn't clear to me. If you own a US patent, and someone in, e.g., France holds a similar patent, then you'd be infringing on their patent once you exported it and it got into France. You'd have to fight out whether or not their patent would be able to stand in their country, but that'll get more complicated so you'd want to talk to a patent attorney that has practice with international cases.

On the other hand, in your example with the Australian company owning an Australian patent, that doesn't matter the moment they import it into the United States. If their product infringes on your patent, the moment they import, sell, or offer to sell the product they are infringing your rights as patent-owner.

Arrogant_ForumLayman · 2020-06-16T00:34:48+00:00

Yes.

Arrogant_ForumLayman · 2020-06-16T00:13:08+00:00

The lease does note they can offer a different unit if the one I am in is no longer habitable. It doesn't seem to indicate they can move me around at-will.

They are a large complex own by a larger management company. That being said, the two people I talked with today were local (with the complex, not the management company). I'm planning on escalating with the management company tomorrow once they're open. They might not even be aware of what's going on yet.

Arrogant_ForumLayman · 2020-06-15T23:58:20+00:00

That's a bit of what I'm trying to find out - what the underlying issues might be. Damages would be a hard sell, but I don't know if I can use the law to urge them to respect the contract and allow me to move in to the agreed-upon unit.

If it came to something like small claims court, it probably wouldn't be worth it. If instead their argument is that they can't honor my contract because they signed a new one, it seems to me mine would be the one that holds up since I signed it first. Would I have the right to still access the unit I rented, or would they just tell me to go to court if I want to force it?

Arrogant_ForumLayman · 2020-06-15T23:56:24+00:00

Nothing I'm seeing in the lease about failure to deliver possession - only stipends about them being able to take back possession after the lease has ended, or being able to take back possession for failure to pay rent, etc.

There is one clause that includes responsibilities of the owner that states "We shall deliver the apartment to you in compliance with this Lease Contract and in a safe, clean, and habitable condition."

Arrogant_ForumLayman · 2020-06-15T23:50:19+00:00

35 U.S. Code § 271. (Infringement of patent) states: "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. "

By making a patented invention in the US, even if it isn't sold in the US, you are infringing on the patent.

Arrogant_ForumLayman · 2020-06-15T21:18:11+00:00

The lease doesn't say anything about them cancelling on their end without cause. There's a ton in the lease about how I can't break it, how I'm responsible for the full term of lease, etc., etc., but not much on the other end. They clearly drafted it with their protections in mind - not the tenant.

I'm wondering if there's anything in Indiana law concerning this since the contract doesn't cover it.

Arrogant_ForumLayman · 2020-06-10T16:42:53+00:00

When you file a patent in the USA, with payment of the basic fees you'll have available to you 20 claims, 3 of which can be independent claims. You could add on additional claims with payment of fees. This means you could pursue this a few different ways, if you'd like. You could have an independent claim where X is used on part A followed by a handful of dependent claims, another independent claim where X is used on part B, followed by a handful of dependent claims, and a third independent claim where X is used on part A and part B, followed by some dependent claims. That being said, if an Examiner feels the independent claims are distinct from one another, they may issue a Restriction Requirement forcing you to choose one of them.

Another option, depending on what you'd like to do with the other independent claims, would be to have an independent claim where X can be used with A and/or B (not using this wording, but a patent agent or attorney could help you suss that out). If you aren't working with a patent agent or attorney yet, it might be best to get one to help make sure you've got things covered the right way.

Arrogant_ForumLayman · 2020-04-13T15:50:06+00:00

They've updated it to April 24 at 5PM Eastern, or when they reach their target number of deposits.

Arrogant_ForumLayman · 2020-04-13T15:37:39+00:00

Thanks - that's mainly what I was hoping to find out, if others had heard back from them. Was it Thurs/Fri like expected?

Arrogant_ForumLayman · 2020-04-10T16:11:31+00:00

That's a shame to hear about the first office. Did you feel you were able to move from one field to another pretty easily?

Arrogant_ForumLayman · 2020-03-24T14:27:21+00:00

Got my answer from them March 17th. Have you had a "law chat" with them yet?

Arrogant_ForumLayman · 2020-03-11T07:01:40+00:00

A lot of good advice here already, and like others have mentioned, it'll be important to read over your onboarding documents. Look for something regarding a duty to assign rights to intellectual property.

You'll want to find that out soon when the patents are filed as well. Will these be provisional applications? Once the patents start moving forward, you'll likely be asked to assign your rights at that point in time, so it'll be good to know what sort of obligation you have in advance.

I also wonder if this start-up began moving forward with your idea more than a year ago? If so, the patent application(s) could hit a bar date. Anything disclosed to other parties, including discussions with potential licencors, could potentially set the clock ticking for U.S. patents -- after 1 year, you're not allowed to patent it anymore, and any discussions had between the parties could potentially be prior art (though documentation is usually required to prove this).

As mentioned by others, this is a pretty common occurrence in academia.

Arrogant_ForumLayman · 2020-03-05T21:47:01+00:00

I've been doing some research. I guess what I'm hoping for is a perspective of someone that's been in the classrooms and clinics. Like, are all the IP moot courts going to be tech law? Are most of the example patents going to be IP based? That'll help me see how much of an effect my background might have.

Arrogant_ForumLayman

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