Do I Disclose Prior Art for Double Invention?

Dear Rich: I have an invention.  It handles a specific problem.  While writing it up I discovered it handles another related but different problem for which there is prior art totally unrelated to the first item.  I know from Patent It Yourself that I can't do a double patent.  Both are valuable and I need to protect both.  Do I need to do the full prior art and so on for both?  It would be like writing up two patents in one.  Is there a way to do one then tag on the second so as to not increase my chances of rejection by going for two separate things? We spoke with Patent It Yourself author David Pressman who stated that it would be irresponsible for any patent attorney to give you advice without seeing the invention and the prior art so he urges you to seek professional advice in this situation.
That said dept. However Pressman notes one general principle that may apply is as follows: Suppose an invention is known for solving a problem, for example, a forked implement is known for cleaning window blinds. An inventor discovers that it can also solve another unrelated problem, such as facilitating seed planting. In this situation the inventor may be able to get a patent on a new use for the implement if it is truly novel and  unobvious over the known use. This is mentioned in the sixteenth edition of Patent It Yourself (page 103) and elsewhere. In any case PTO Rule 56 requires the inventor to disclose all information related to patentability.
Dont try this at home dept. Again Pressman stressed that this should not be construed as legal advice or applicable to your situation and you should see a licensed patent pro before deciding what to do.

The Prior Art Conundrum: Knock It or Not?

Dear Rich: I've just finished Patent It Yourself. The one point I'm struggling with comes in Chapter 8 (How to Draft the Specification).  I'm finding it difficult to reconcile two ideas: (1) "Don't say what the prior art can't do because this can make your invention or the problem you discovered seem obvious." (2) "...you should, as much as possible, try to "knock the prior art" here in order to make your invention look as good as possible." I appreciate the underlying conundrum (and that it's not of the author's making!), but this is currently my biggest concern. Since the 'non-obvious' requirement is likely to be a bigger hurdle than the 'usefulness' requirement, I'd appreciate an opinion on whether the greater risk here is in calling too much attention to the shortcomings of the prior art (making solutions seem more obvious) or not enough attention to them (making solutions seem less useful). PIY author David Pressman responds, "This is a good question. Here’s a better explanation that I had recently written in response to another person who had seen this dichotomy:

In the PRIOR-ART section don’t mention your invention or suggest any solutions. Never state that any prior art reference doesn’t teach a specific feature of your invention. When you knock the prior art, just state what's generally wrong with it from a novice's standpoint and don’t state that it doesn't have any specific novel feature of your invention. This is because (a) most people would not realize or consider that the lack of a specific feature is a disadvantage, and (b) it can make it seem like the lack of a specific feature was already known in the art and was not discovered by you, the inventor. For example, the right way to indicate this would be to write, "Smith’s system operates slowly." The wrong way would be to state, "Because Smith doesn’t eliminate the reaction waste products, this delays the refining process." 

Google's Prior Art Button

Google announced a new feature for their patent search tools. It's a button that appears on the pages of certain patents. Clicking the button triggers a search based on key terms from the patent. What's nice about the search is that it only retrieves documents from before the date that the patent was filed. This may prove helpful for inventors seeking out prior art. Check it out.

Does Provisional Trump Regular Patent Application?

Dear Rich: Can you answer a question about provisional patent applications? We've invented an automobile accessory and we filed a provisional patent application. Then we filed a regular patent application. We recently learned that someone else has filed a regular patent application before ours (but after we filed our provisional). Do we lose the race because they filed a regular application before us? Under current patent law (first-to-invent) there is no race to the patent office. The issue is who invented the device first. That said, filing dates are important because they often reflect the date of invention (or constructive reduction to practice). Your filing of a provisional patent application, assuming it accurately reflects the invention in your regular application, can be used as prior art to stop a later inventor (or filer in this case) from obtaining a patent. In summary, if you wrote a good provisional patent application, you're probably the winner. This rule was demonstrated in a court case about a year ago. An inventor, Giacomini, filed a patent application claiming a method of selectively storing sets of electronic data. Another inventor, Tran, filed a patent application after Giacomini for a similar invention. However, Tran’s application was based on a provisional patent application that accurately described the invention and was filed before Giacomini’s application. In that case, the Federal Circuit held that Tran as “first inventor,” could claim patent rights and use his patent application as prior art against Giacomini. In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
Would the outcome be any different under the America Invents Act? On March 16, 2013, the U.S. switches to a first-to-file system. Under that system, the first inventor to file gets the patent. So, the outcome would likely be the same as your provisional patent application would be considered the first filing. Again, that's assuming your provisional patent application accurately reflected the invention claimed in your regular application.

Nonobvious Prior Art Claims

Dear Rich: Say there is a known prior art that currently has a patent pending and I file for a provisional stating claims with which I believe are nonobvious to the prior art. [Hi Readers. Before we lose you in a torrent of inventor-speak, allow us to provide a short translation.  This inventor has come up with something that he believes to be new and not obvious (nonobvious) to those in the field of invention. (These two standards --  new and nonobvious -- are the basis for getting a patent.) Another inventor has filed a patent application for a related invention (the "patent pending" reference).  In summary, the inventor doesn't believe his invention is substantially similar to the existing technology in that patent application (or "prior art"). What follows are his questions and our answers.
1. Can they accuse me of infringement and take me to court? The other inventors cannot sue you for patent infringement until their patent is granted. If 18 months have passed since the other inventors filed a patent application and the application has been published, they can notify you about the application and then sue you for any infringements that occurred after notification. (We've discussed that previously here). In either case, the actual lawsuit cannot be filed until the patent is granted. Whether the inventor succeeds obviously depends on whether you guessed right about the prior art.
2. Can I sell during my provisional status and if or when do I have to stop selling because there is a known prior art with a patent pending status? You can sell any time you want but if you sell your invention and it infringes, you'll be liable once the other patent is granted.
3. If this invention which I believe is nonobvious to the prior art shows that it has commercial value, but there's a known prior art, is it worth filing a non-provisional after 8-12 months? We're kind of going around in circles. If you have commercial potential and you're concerned about infringement (or issues of prior art) you should bring in a patent attorney to provide an opinion before you waste your money or time on the pursuit. Keep in mind that whether you're right or wrong about the prior art, the other inventor can come after you if there's enough of a case to get in court. And then you'll be spending money on a court battle when you could be devoting the time and money to some other great new idea.
4. If my invention is non-obvious to the prior art will a patent be issued and do I still have to license the basic idea of the prior art? If your invention is new, nonobvious and meets all the patent requirements, you're entitled to a patent. Keep in mind, these determinations are tied to the interpretation of the patent claims, explained here.) If the invention doesn't infringe, do you have to license rights from the other inventor? No.
5. I read in your book that changing something small may be considered as a novelty and may be considered patentable (if I am correct). If so, do you have to go to court to prove that, or can the examiner just approve it, and when a patent is issued to the nonobvious then you are protected? In some cases, small changes are enough to get a patent, in other cases, no. If an examiner feels the application is sufficient, you'll get your patent. Alas, that patent can always be challenged and then you may have to deal with two battles, a patent reexamination and a court case.