I created an object that I never patented but someone else did I don't know


I created an object but never got around to patent it. I mailed the drawings and all my design ideas to myself to protect the right of later patenting it. I still have that mailing unopened in my safe. I was shopping recently and I found my idea/object for sale. Do I have any rights to this object now? What is my legal recourse?


Posted 2019-08-05T14:08:10.727

Reputation: 1

3Unfortunately, mailing drawings to yourself provides no protection whatsoever. – Eric S – 2019-08-05T15:28:46.640



There are a couple of things to understand here:

  1. A patent is kind of an exchange between the public and the inventor. The basic legal theory is the inventor agrees to share their very special knowledge with the public (as soon as possible) in exchange for a the public granting a limited 20-year exclusive right to use, market, and sell products and services incorporating that very special knowledge. This is only granted to the first inventor to file/share their work.

  2. Sadly, one can't "protect the right of later patenting it". Patents are quite literally a "race to the office". A famous case of inventing the telephone became a case about who got to the office first, and why, first-to-file their invention. Unlike Copyright, which applies generally to works whether or not one has filed the official paperwork or not, patents generally have to be legally filed in order to be considered valid.

  3. Patents are specific to their legal claims. Only by examining the specific disclosure of the work and its specific legal claims would one know for sure whether the idea one had and the product produced are identical. If not one might still be able to patent something. Looking at basic infringement analysis would probably help someone answer most of those questions.

  4. One must have a patent before one can claim an infringement. If one doesn't have one, then they don't get to claim a legal remedy. Ideas aren't legal property. Inventions become legal property ONLY after they are filed (unless they are trade secrets, which aren't shared with anybody outside of an agreement of confidentiality). Presently, US patents, and most patents throughout the world, work on a first to file basis, meaning the first person to file gets the legal claim.


Do I have any rights to this object now?

Probably not.

What is my legal recourse?

Probably none.


Posted 2019-08-05T14:08:10.727

Reputation: 111

Really solid answer except you might want to explicitly answer her question: "Do I have any rights to this object now? What is my legal recourse?" which would be none and none. – Eric S – 2019-08-05T15:30:24.020

1The comment was amended for clarity and ease of understanding. – Patently – 2019-08-05T15:40:28.553

Citing the Edison case might not be so clarifying. Prior to September 2011, first to invent was the law in the US. Since then, it is first to file. Here is a good link: https://en.wikipedia.org/wiki/First_to_file_and_first_to_invent.

– Eric S – 2019-08-05T21:16:49.000

@EricShain you're not wrong. However, in the cited case (Elisha Gray & Alexander Graham Bell) the USPTO required inventors "file" a working example (no longer a requirement). In that case the USPTO effectively followed a "first to file" doctrine. Only after that case did the first-to-invent doctrine emerge and gain preeminence (partly because of the controversy). The USPTO has returned to its "first-to-file" system by trying to merge standards with international patent offices (although it no longer requires a working sample). – Patently – 2019-08-06T19:24:06.340

I’m just thinking it is better to cite examples relevant to the law the OP is living under. – Eric S – 2019-08-06T19:27:45.167

True, but nobody forgets the Alexander Graham Bell v. Elisha Gray case. You can optimize for one of: (a) absolutely relevant, (b) absolutely unforgettable. Since this will be read by others seeking general advice I chose the latter. – Patently – 2019-08-06T19:35:32.783


No and none. And mailing something to yourself was never worth anything.

Under the previous U.S. patent law (anything filed before that portion of the AIA took effect in March 16, 2013), one could win a dispute with someone who filed earlier than you filed by showing you conceived of the invention before the other person and diligently went about reducing it to practice. This was called an inference proceeding. Many things could be used as evidence, but an "unopened" envelope you mailed to yourself was treated exactly as an unsubstantiated assertion by the inventor, meaning it was of no evidentiary value.

Of course you never filed anything so, even under the old patent rules, you had no priority to fight over. We are now a first-to-file country but due to the strange 1 year grace period of the AIA you could also think of it as first to publish, as long as you filed within a year and didn't go beyond the publication. You didn't file or publish or even effectively establish a date of conception.

George White

Posted 2019-08-05T14:08:10.727

Reputation: 21 648


@patently is mostly correct!

The patent office is first to file, however there have been changes to the law which change the legal practices of the patent office. This is especially important as the patent office takes a long time to get to things.

The first to file ammendment came about from the AIA ( America Invents Act) in Sept 2011, which made a number of changes in patent prosecution from the pre-AIA days.

The most important to you would be the first to file. Pre-AIA, the patent office did first to file but if co-pending applications were for the same invention, the application would be granted to first to invent with the proper paperwork. That is why engineers were taught to document all aspects of the R&D process as it could make or break a patent case.

If the patent pre-dates the AIA it could be considered using the directives from the period of which it was filed. Therefore you might have recourse. But if it was even a day after you are f**ked.



Posted 2019-08-05T14:08:10.727

Reputation: 37