Provisional Patent Applications

Provisional patent applications provide a way for entrepreneurs to file their invention with the US Patent Office and delay filing a more formal regular patent application for up to one year. In this article I will show you how provisional patent applications can provide significant value and benefits for startup businesses.  More importantly, though, is that under the new “American Invents Act”, an inventor must file for a patent before offering an invention for sale or before any public use of the invention.  This takes affect in 2013 and means that inventors need to be better informed about lower cost options such as provisional patent application to avoid the negative consequences of the America Invents Act.

Myths abound about patents.  Don’t be misled by claims that patents are expensive technical tools only major corporations can afford.  Patents can provide vital, affordable, protection to entrepreneurs, and it is important for entrepreneurs to be aware of them before starting any business.  Disparaging remarks about provisional patent applications are often made by those who focus on, and exaggerate, their limitations. In reality, provisional patent applications are regularly used for cost-effective protection in the early stages of entrepreneurial development.

The key benefit to filing a provisional patent application is the freedom to shop your idea to prospective investors and customers while protecting your valuable invention from the risk of being stolen. Once the application is filed, a person cannot come and back-date your idea.   Of course there may be other aspects of your business that are best kept secret, but once the invention is recorded in a patent application, it’s protected.

When you are shopping your invention idea to angel investors or venture capitalists, you will soon find they are unwilling to sign a non-disclosure agreement.  They say that they see too many ideas in a year to take on the liability for your idea. Why should they enter into a contract with you when they can simply bypass you and look into the next proposal they have before them?  The solution is to file a patent before approaching investors. Potential investors often speak with potential customers to see if the idea has merit before they decide to invest in your business. In effect they are testing the market for your idea.  You have no control over where your invention goes once you disclose it to potential inventors.  A well-drafted provisional patent application provides the protection you need while saving you the cost of a full patent filing.

A note of caution is needed here. Entrepreneurs need to steer clear of “cheap” poorly drafted provisional patent applications.  The value of patent applications, whether provisional, or full, depends significantly on the care with which they are written.  A provisional patent application must disclose your invention properly to protect it and to give you the option later to file a full patent application. Services offering cheap applications may well cost you dearly when your application fails to provide the protection you thought you had.  A patent attorney can help you develop a patent strategy while your company is still in its infancy – before you make any mistakes.

Provisional patent applications let you roll several related inventions into the same application.  This is a valuable advantage because when you are starting a business you may well have multiple patentable ideas.  A provisional patent application, because it can protect several related ideas, may enable you to file for several regular patent applications later based on just one provisional patent application. You save time, effort, and expense as you gain protection for your bundle of ideas.  It’s good strategy to file an invention-rich provisional patent application, and then file for regular patents once you have tested your product ideas in the market.  Then the expense of a regular patent application is justified by the value demonstrated by your test marketing.

The most common reservation expressed about provisional patent applications is that they expire in one year. The one-year expiration of a provisional patent application means that you have one year from when you file the provisional patent application to apply for a regular utility patent.  The filing date of the provisional patent application establishes your filing date with the patent office, which in turn, establishes the lifetime of your patent.  To understand the value of this requires a brief look at how patents are allowed. In the US the patent belongs to the person who first invents and reduces the invention to practice. Reducing to practice means either prototyping or being able to describe in detail how to make and use your invention.  Starting in 2013 the inventor must be the first to file the application as well.

Provisional patent applications start the clock ticking on when you are required to file even though the invention may still be under development.  An inventor does not need to reach perfection in the design, but must provide enough information for someone to make and use it without undue experimentation. It is not necessary to have the complete invention engineered to the last detail in order to apply for a patent. Thus the inventor need only disclose the best way of doing the invention at the time the provisional patent application is filed.  When the regular patent application is filed, other means of enabling the invention can be added. 

Filing for a provisional patent application can add a year to your valuable patent and the income it brings. This is a huge advantage.  Where a regular utility patent is good for about 17 years, a provisional patent application pushes the protection time out another year.  The advantage is that the 21st year of product life may be more profitable than the first year when you were just introducing your product.

Provisional patent applications provide an affordable way to shop a new idea, reduce the chances of getting involved in a “who invented it” dispute and add an extra year to the profitable life of your patent. These are good reasons to consider provisional applications.

 
The advice included in this article is for education purposes only; consult our patent professionals for specific information about your invention.

Side Resource

Provisional patent applications provide affordable protection while you test market an invention

The advice included in this article is for education purposes only; consult a patent professional for specific information about your invention.



 

About the Author

 

Mr. Pete Tormey heads the Intellectual Property Group for Antero & Tormey LLP in San Francisco and Walnut Creek.  He has a J.D., an MBA in marketing and a BS in electronic engineering.  He is licensed to practice in California and before the US Patent and Trademark Office.  He can be reached at pt@AnTLegal.com  or at (925) 352-9842.


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