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Last night I submitted a utility patent as a C-I-P to a provisional filed a year ago. The patent is for a process/system where Email recipients can instantly authenticate the source or sender of an Email without needing to open or explore it. It is a simple solution for a very serious and rampant problem, known as "phishing" and "spoofing." Both are tools to trick innocent people to divulge usernames and passwords for secure online accounts. The uses for this solution are widespread, from ebay to Bank of America to Yahoo to Facebook to the IRS.
I want to license it to any company that offers online access to any kind of a secure account. I did not have the money to file for the expedited patent process.
What I need to know is (1) Is there any reason I should wait before licensing the pending patent, (2) When must I file for an international patent before losing protections, (3) What to do if someone uses it without permission, (4) What kind of atty should write the license agreement?

Submitted: 164 days and 4 hours ago.
Category: Intellectual Property Law
Value: $30
Status: AWAITING CUSTOMER ACTION
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Optional Information

Pennsylvania

Already Tried:
I haven't tried anything yet, but I want to have a license contract drafted, hire a bunch of sales people and get this solution into the market as soon as possible. I should have done it long ago, but have been working on getting a different company funded. I just need to also know if there are any considerations that I am missing or overlooking here.

Posted by Patent Expert 164 days and 2 hours ago.

Answer

(1) No, you can start licensing your invention right away without giving up any future gains.

(2) You have one year to file a PCT application (Patent Cooperation Treaty) after your U.S. filing date. There is no such thing as an "international patent", but a PCT application can be used as a basis to file patent applications in 117 countries.

You have 18 months after you file the PCT application to file in each country you wish with those applications claiming priority to the PCT application. Many countries use the U.S. prosecution history to decide whether to allow you a patent in that country.

Filing in individual countries gets pretty expensive except for Canada and Australia. You need local counsel to file the patent application in each country, which is usually handled through your U.S. patent attorney.

(3) Generally if someone is using your invention you would start by sending them a letter demanding a license fee or telling them to stop using the invention. If they refuse you have to wait for the patent to issue before you can sue, but it is possible (but unlikely) to recover damages from the time the alleged infringer is put on notice. Constructive notice may be established when the application is "published" by the USPTO. Patent applications are published on the USPTO website 18 months after they are filed.

(4) I would use an attorney with technology licensing experience. Most patent law firms have attorneys with this kind of expertise. Ask about the attorney's patent licensing experience before hiring them to negotiate a license. Not all patent attorneys are qualified to negotiate licenses.


164 days and 1 hours ago.

Reply

Thank you for your reponse.

It seems that the best thing to have done in this situation would have been to pay the extra $300 to use the expedited filing process. Can I upgrade my application to the expedited method now that the utility patent application has already been submitted? Does the whole process then become much more expensive or complicated if expedited?

How do I prove to a potential licensee that there even is a patent pending, to disuade them from using it without authorization? Is there something I will be getting from the patent office?

Is anyone at your firm qualified to negotiate a license? I assume this would be a single license that can be used with all clients? How much would this cost, if your firm is qualified? Would you like to suggest someone?

One other thing I wanted to ask, which has been bothering me about a different series of patents I need to file is: You mentioned 117 countries in which to file a patent. I am trying to start a large internet company. It seems to me that even with a US patent, and filing the ICT, and filing for patents in 117 countries, there will always be some island somewhere in the world where someone could just copy my website and all the content - and pump it out onto the internet without any way to stop them or recover damages for infringement. Am I correct?
Is that the type of scenario when I would just file to keep the application confidential, and claim not to be filing internationally? Once I "publish" my site, no one else can try to patent it, correct?

What would you charge to read the 6 pages of specifications, 6 drawings and the abstract of the patent I filed yesterday to see how truly effective it will be?


I'm on the east coast, so I will read your forthcoming response in the morning...

Thank you

Accepted Answer

You can file a petition to make special if you are over 65, in bad health, or for a few other reasons that I do not think you qualify for.
<br />
<br />Alternatively you could file for expedited examination. This requires that the application has been filed electroncially. So if you filed a paper application you would need to file a fresh application (Continutaion, CIP, etc.). You also have to pay for a prior art search and careful analysis of all prior art. This would cost at least twice as much attorney time as preparing the patent. So yes, much more complication and cost involved.
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<br />In order to get a patent in most countries you must be the first to invent the invention. So noone can copy your invention in order to get a patent, though I have seen this attempted in China. If filing in China it is wise to have someone monitoring patent applications that may be copying you so that you can block them.
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<br />A patent creates liability for other people importing or using the invention in the country the patent is granted in. So even if they bought infringing software from a country where you did not hold a patent they could not legally use it on their computers in the country where you hold a patent. Of course there will be people using pirate software but that is unavoidable for most software.
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<br />You would be wise to have an attorney review your application. Though your specification may be sufficient it generally takes an expert to draft valuable claims. Claims are very important and require careful crafting. It should take an hour or two to look over your application, but I can guess that they are going to tell you that your claims need work if you have not studied patent law.
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<br />I am located on the West Coast but if you tell me where you live I can refer you to a reputable law firm.
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Edited by Patent Expert on 6/11/2009 at 5:56 AM

Expert: Patent Expert
Pos. Feedback: 100.0 %
Accepts: 
Answered: 6/11/2009

Patent Prosecutor

Registered Patent Attorney, Licensed California Attorney

162 days and 15 hours ago.

Reply

Sorry- one last clarification... Will the patent office be sending me some sort of confirmation or documentation that this patent is pending, so I have some way to prove to clients that the "solution" being offered is truly pending patents?

Posted by Patent Expert 162 days and 14 hours ago.

Answer

You will receive a filing receipt within a few weeks of filing, but it only has the title of the invention. You basically have to show the intended licensee the application you filed. You have to be very convincing to get license fees before a patent issues. Licensees are very aware that few patents are granted with the same claims they are filed with. You almost always have to amend the claims to get a patent.

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