Legal Question in Intellectual Property in Michigan

Re: Questions regarding patents

1) If the provisional patent expires before we file for a non-provisional patent, can another party patent the idea?

No one can patent an idea; it's the expression of ideas that gets protected by patent (and other intellectual property); if we protected ideas, we'd be thought police and no one I know reads minds that well. :-)

Another party can legitimately apply for patent protection on the invention under certain circumstances.

2) Can we still patent the idea after the provisional patent expires (after 12 months)?

You can properly make application to patent your *invention* after the expiration of the provisional application ONLY IF you have not disclosed or publicly used the invention in the meantime. You would lose the priority date reserved by your provisional application by filing more than a year afterward, which means that the literature could be searched and used against your invention by the USPTO up until the filing date of your nonprovisional application, rather than stopping at the date you filed your provisional application.

3) If the other party IS able to patent the idea, are we still able to use it?

No one can patent an idea. If a patent should issue from OtherParty's application for the invention, they would have the right to prevent you from making, using, selling, importing or distributing the invention in the US, and they would probably charge you licensing fees for the privilege of using the invention. There may -- MAY -- be remedy for this situation in court, but that's a horrible process.

4) If no other party can patent the idea, does this mean anyone can use it legally?

1. If no patent exists AND the *invention* is kept as a trade secret, the owner of the trade secret would have remedies against infringers under state-based trade-secret law.

2. If no patent exists AND the *invention* has been publicly disclosed or used in such a way that a person of ordinary skill in the art of the invention could duplicate the invention, then the invention enters the public domain upon expiration of one year from the date of disclosure.

Contact my office if you don't have a patent attorney working with you. I handle long-distance patent work frequently.

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.