The Inventor's Mentor
Shoot Provisional First, Ask Questions Later
In very competitive fields such as the Internet or Biotechnology, and with the advent of the new first-to-file patent law, a day could make the difference whether you or your competitor gets to patents an invention.
Filing a provisional application offers a way to secure a priority filing date in case someone else with the same idea files a patent. Provisionals are cheaper than regular non-provisional applications. At the present time, the USPTO filing fee is only $130 for a small entity and $65 for a micro-entity. A signed declaration or oath is not required nor is an information disclosure statement (IDS) which is a list of the relevant prior art known to the inventor. And since the writing of the provisional is simpler, fees charged for preparing the application are also lower. In addition as soon as the provisional is filed, the inventor can label his invention with “patent pending” as a warning to would-be infringers.
A provisional application is NOT a patent. It is NOT examined by the USPTO. It is simply put in storage for one year after which time it is discarded. To be of real utility and provide the benefit of its early filing date, it must be followed within a year of its filing by a non-provisional application that references the provisional.
The pros of provisionals. Since a provisional should be followed within a year by a non-provisional, and the life of the non-provisional extends 20 years from its own filing, the total extent of patent protection is nearly 21 years. Another benefit of a provisional is that any amendment to the invention can be rolled into the non-provisional when it is filed at a later date. These amendments, of course will not benefit from the protection of the early filing date. More than one provisional can be rolled into a non-provisional, provided that they are all filed within a year. Provisionals are good choices for small independent inventors with limited means and incompletely defined ideas, who need patent protection while they test the profitability of their invention during the initial manufacturing and marketing phase.
The cons of provisionals. The USPTO currently has a huge backlog (about 5 years for software inventions,). Since the examination process can only occur after the non-provisional application is filed, filing a provisional adds at most one year to the prosecution of a patent. Therefore it also postpones the date when the patent is awarded and royalties can be collected. In addition, provisional are not convincing to investors who may need to know for sure whether the patent will be awarded. Filing a provisional followed by a non-provisional reduces the upfront cost but is more expensive in the long run.
Poorly written provisionals offer little protection. A provisional application has one and only one usefulness: it provides a priority filing date that protects the inventor if someone else files the same invention after the date and is a documented proof that the inventor was the first to file. Once an application is filed it cannot be changed and if any challenge is raised regarding the originality of the invention, the provisional must stand on its own. It is therefore critical to remember that a poorly written provisional is an absolute waste of time and money. On the other hand, a well written provisional can easily be refiled as a non-provisional with hardly any modification. Thus money spent on a well written provisional can be recouped when the non-provisional is filed. Be careful of patent services who file provisionals at a greatly reduced price. They will just take a copy of the write-up you give them and send it to the patent office.
A well written provisional should satisfy all the requirements as defined by patent law, including an enabling specification sufficiently detailed for someone in the field of the invention to build the device, and the best implementation mode of the invention as envisioned by the inventor. The specification and drawings need to be complete, broad in terms of what is described and specific to make sure the application is meeting all patentability requirements. Filing at least one claim is recommended to clearly define the invention. Cutting corners on the provisional renders it useless.
In Summary: If the inventor has a clear and well defined idea of his invention, and he is convinced of the marketability of his idea then he may decide to apply directly for a non-provisional patent. However, if the design of the invention is still in a state of flux, and the market is uncertain, the inventor may decide to apply for a provisional to obtain the protection of a priority date while giving him time to refine his invention and to investigate the market.
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If you have any question you can contact me at (858)259-2226 or email me at firstname.lastname@example.org.
This newsletter should not be construed as being legal advice. ©2014 by George Levy