Legal Question in Intellectual Property in New York

I've came up with an invention. I came up with this after several problem while shopping online and in-store.

A decent amount of information online says that a person should file a provisional application to protect it while in the development stage. I've read information that the provisional should be as detailed as possible because you can't add new information to it.

This has got me scrambling for weeks now. The invention is going to be a method/process of getting coupons online that can work online and in-stores. Do I have to describe how the website is going to be made (such as information regarding the server, network and etc)? I know a little bit about creating websites but I would have to discuss the invention with someone with more of a background to get specific details.

And I know a general idea of how the coupons will work with retailers; I don't know the actual specifics details such as integrating with p.o.s (point of sale) systems . Once again this would be something I would have to discuss with someone more experienced in the field.

This invention is doable its just a different method/process of getting coupons.It will work like any other coupon people use now online and in-store just a different way of getting them. The problem is most say include a lot of details (in provisional application) but in my situation in order to do this I'm going to need to discuss the invention with others before filing the provisional. This risk someone filing first and speaking about it before filing.

What to do in this situation?

Thanks.


Asked on 1/06/14, 2:36 pm

1 Answer from Attorneys

You should discuss your invention with a Patent Attorney first. Spending weeks learning the Patent System is respectable, but those of us that have passed the Patent Bar spent years learning the nuances of the system. It will save you a lot of time, effort, and most likely create more value in the patent - an attorney will not divulge your invention to others. If you are discussing your idea with other people, and possible co-inventors, you can have them sign a Non-Disclosure Agreement before you talk. These can be relatively simple or very detailed and an attorney can help you here as well.

Even though you wrote a nicely detailed question, there are too many additional factors I would need to know help you get your application off the ground. The biggest thing that jumped out to me is that you should know a Provisional Application will not ever protect your invention. All it does is reserve your filing date in the "race to file", starts a one-year deadline in which your full Non-provisional/International application must be filed, and begins numerous other deadlines that will be important to the life of the patent.

The level of detail you must include is tied to a legal concept known as "enablement." The biggest difference between a Provisional and Non-Provisional application is that a Provisional Application does not have "claims." Claims are ultimately what the examination will focus. In order to stake your "claim" on an invention you must provide enough information to "enable one skilled in the art" to reproduce it.

Walking the tightrope of how much to provide is one of the most helpful skills of a Patent Attorney, but if you insist on developing your application on your own you should perform what's called a "Prior Art Search" to make sure your idea isn't already protected. Go to USPTO.gov and watch their video series on how to search their database. Then read a few patents in your area of expertise and see how much disclosure those included.

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Answered on 1/06/14, 3:49 pm


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