New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)(Michel, J.), debunks the myth that a patent applicant can file a simple disclosure to obtain a provisional date, then provide a proper disclosure up to a year later as part of the utility application filing.
In this case, the inventor invented a new drill bit where the bit body was "angled with respect to the … housing." While this angle was described in the utility application, the angle was not disclosed in the provisional application. The inventor offered the drill bit for sale more than one year before the utility patent application filing date. The angled drill bit body was not adequately disclosed in the provisional application. The inventor could not claim the benefit of the provisional application. The patent was declared invalid. Inventor loses.
Lesson: hire a patent attorney and do it right or save your money and don’t do it at all.
James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."