Threat of loosing the possibility of obtaining a patent when selling PPA?

Greetings to all,

I am not a US citizen, however I have submitted a provisional utility application and now I want to sell my invention. With this regard, I have two questions which have not been quite completely elucidated in the US patent law legislation or I simply couldn’t find the required answers.

The first question. Let us suppose that the next day after filing a PPA I disclose the content of my provisional application to a company, having beforehand signed a Non-Disclosure Agreements with this company. The company, having acquainted with my invention, submits a non-provisional application, which is similar to mine, for an accelerated procedure for obtaining a patent during one year. Since my application has not been published, an examiner is unable to refer to it as one determining the prior art. It happens that big companies obtain patents on accelerated procedure for 2-3 months. Thus, adopting my invention, the company can obtain a patent on it sooner than I. The question is how the problem of infringing between my application and the patent is solved when the patent is being granted to me? Will be the patent of the company invalidated?

The second question. I have read many references of patent practitioners, and all patent agents and attorneys say that the only way to sell a patent is filing of a non-provisional application and searching for a buyer afterwards since nobody is interested in buying of a PPA. It is believed that an invention could be successfully sold only if it is a non-provisional application having passed through the First Office Action (FOA) or an issued patent. At the same time, none of practitioners explains why PPA isn’t attractive for buying. Can someone explain it? In my opinion, if a PPA has certain features, it is more attractive than the acquisition of an assignment or a license on an issued patent. Those certain features are the following: 1. PPA features exceptional novelty – no prior art can be found interfering with the PPA. 2. A search conducted by a practitioner that revealed none or very remotely similar inventions. 3. PPA has been submitted without claims and is well written with broad coverage. If meeting these conditions, a potential PPA buyer has a possibility to develop quality claims, which often neither a private inventor nor his agent can put together, and also rework the text of the application. When buying a ready patent or non-provisional application after FOA, buyer doesn’t have said possibilities and therefore the buyer has to buy less quality patent written by the inventor himself. Hence, buying a quality PPA is, in my opinion, more attractive for a company. Please correct me if my reasons are not correct.

Thanks,
Alex

Hi Alex
As to the first question, this possibility exist, so they have violated the NDA and you can pursue them on that point. Typically, if I were the company, I would be much smarter and do a design around where it accomplishes the same purpose but in a completely different manner and argue that their invention is not copied from your invention and they have a valid patent that they invented. Hence, your provisional should think of as many design arounds as possible and disclose all possibilities to choke off this loophole.

As to the second question, it all depends on the quality of the PPA. If the case was prepared by a good attorney, then your argument stands. However, if you did this yourself without prior experience, companies may think less of the application. Further, people prefer issued patent for certainty and pending applications will be valued less. PPAs are lowest in that pecking order because they are not examined and there are chances that the filer miss the one year deadline, rendering the whole PPA worthless. Hence, companies prefer issued patents with commercial success first, and PPA is the bottom of the preference.
Hope that helps and you can call me at 408-528-7490 if needed
Bao Tran
Tran & Associates