How JustAnswer Works:
  • Ask an Expert
    Experts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional Answer
    Via email, text message, or notification as you wait on our site. Ask follow up questions if you need to.
  • 100% Satisfaction Guarantee
    Rate the answer you receive.
Ask BizIPEsq. Your Own Question
BizIPEsq.
BizIPEsq., Attorney
Category: Intellectual Property Law
Satisfied Customers: 996
Experience:  I am a tech attorney and I represent clients with technology, internet and intellectual property matters
73280834
Type Your Intellectual Property Law Question Here...
BizIPEsq. is online now
A new question is answered every 9 seconds

Hello - what do I have to do to establish a first in commerce

This answer was rated:

Hello - what do I have to do to establish a first in commerce date? I imagine a sale with receipt? Do I have to have ten different customers?

BizIPEsq. :

Hello, I will be assisting you

BizIPEsq. :

Question: is this in connection with trademarks?

Customer:

Hi Biz - no its in connection with a product with a patent pending.

BizIPEsq. :

Generally speaking, first use in commerce is not applicable to patents as a patent does not have to be in commerce to be registered. Can you please briefly explain why do you need to establish a first use date?

Customer:

Ah, I have a patent pending that is going to be up soon and as we've discussed I don't have the money for a full utility non-provisional patent. I was thinking I could sell some units and that might give me some protection.

BizIPEsq. :

If your provisional patent application is about to expire, essentially you have three options:
Option 1: File Non-Provisional - File a full utility patent application that claims priority to the first provisional patent application's filing date. To the extent possible this is generally the better route (I realize you noted that you don't have the means but I wanted to note this option as this is an option that you have)
Option 2: File 2nd Provisional - After the expiration of your this provisional you can file a second provisional patent application. You will, however, lose the current priority filing date and will now have the priority date of the second application.
Option 3: Not doing anything - Generally speaking, an inventor has a one year grace period to file a patent after the public exposure of the idea/product. Assuming then that you haven't exposed the idea/product to the public, you can allow your provisional application to expire. Following the expiration, do not expose your idea/product to the public (i.e. don't sell or promote or publish it etc. basically keep it confidential). When you get some money then file for a patent. However you risk somebody else filing for a patent on this idea in the interim.

BizIPEsq. :

As noted, option 3 is risky, so the extent you can afford a 2nd provisional and assuming you did not expose the idea in the past year and further assuming that no one filed for a similar patent in the past year, it would be a reasonable compromise between doing nothing and filing a full non-provisional utility patent.

BizIPEsq. :

Thank you for allowing me to assist you

BizIPEsq. and other Intellectual Property Law Specialists are ready to help you