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Patent Falsehoods

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I have practiced patent law in Chicago for 26 years (the last ten in the western suburbs) and there are two aspects of your article about Jaime Aramburo ["Pipe Dreams," September 15] that jumped out at me (as they would to any competent patent lawyer). First, the story says Jaime used his invention in the early 1990s. This would make it impossible for him to apply for patent protection because U.S. law requires the filing of an application within one year of the date the invention is made public (in most foreign countries, an application must be filed before ANY public disclosure is made). The first question Jaime should have been asked by Advent is whether he had made any disclosure of his invention that would prevent him from lawfully filing an application. Second, provisional patents are not "awarded." A provisional patent application is not an application for patent: provisionals are not examined by the Patent Office, never issue as patents, and expire one year after they have been filed. They offer no protection against infringers.

The most a provisional application will do is give the applicant an opportunity to file a full application up to one year after the provisional is filed and claim the filing date of the provisional as the filing date of the full application. This will enable an inventor to preserve a filing date before the one-year period from first disclosure expires. There are a number of disadvantages to provisional filings and any inventor should be made aware of them.

As to the "missing" search report, it should be a simple matter for Advent to provide Jaime with a duplicate. Things to watch for in a search report are where, how, and by whom the search was conducted (the search rooms at the Patent Office are still the best source for search material, in my opinion, and a professional searcher working out of the Patent Office has an opportunity to confer with patent examiners for search guidance and support). A search done solely on the Internet is limited by the size of the database (most go back only about 25 years or so--the Patent Office has been around since the U.S. Constitution was written and any issued patent going back that far can be used against a newly filed application). Individual inventors should beat the bushes on their own for products similar to the one they've developed, then take those results to a patent attorney who can conduct (or order) a search done without regard to "selling" additional services such as market studies and preparation of press releases.

Jerry Schulman

Western Springs

Mike Sula replies:

Thanks for the clarification.

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