Provisional Applications

Focus on Technology – Patent Rights in Your Inventions

Preserving Rights via Provisional Applications

by Jacques M. Dulin, Esq. – Special to the Olympic Business Journal

          Editor: Protecting rights in innovations and business ideas is vital to attracting start-up capital and to the long term success of a business, particularly for a small company establishing itself in today’s competitive world. This article is a “must-read” for every business as it alerts you to the importance of filing first before publicizing an idea or product and how to do that inexpensively. Under the recent 2011 America Invents Act, the US has shifted from a first to invent law to a first to file law, making the race to the Patent Office imperative. Thus, filing promptly is vital to preserving your rights.

Scenario: It’s Friday morning. You’ve developed a widget: A tool you use in your trade; a rose fertilizer formulation; a computer application program; or an accessory for the OEM equipment you sell. The local newspaper proposes an article with pictures for the Monday business section. You learn from a patent attorney that the widget might be patentable, but you have only one year from that first public disclosure or sale to file for a US patent. And, if you don’t file before the article appears, you loose all international patent rights, including Europe (a good market), and Mexico and the Orient (cheap labor).
          You have prototype drawings, or records showing improved results, photos and a brief description of the widget. But the weekend is almost here. There simply is no time to prepare and file a full Regular US Patent Application.
          Scenario 2 (a year later): the widget was featured in the paper or went on display a year ago next Monday. You have already lost the foreign rights, and unless you get a patent application on file by Monday you will lose the US Patent Rights.
          Scenario 3: An angel investor wants an Intellectual Property audit to find out what proprietary rights you have as security for investment in your company and/or to support a private placement. The widget has a substantial market share. But unless you file by Monday, your widget becomes free for competitors to copy, and your market edge is gone.
          Think you have lost all of your patent rights? Think your competitors will freely copy at lower cost since they have no R&D to amortize? Think the opportunity for badly needed capital to take advantage of the market is lost? Think again.
          A Provisional Application may be the answer to preservation of your patent rights. Although a Provisional does not have the status of a Regular Patent Application, it does establish a priority filing date, potentially preserving valuable patent rights for a year.
          To file a Provisional Application, fill out a 1-page cover sheet (available at the USPTO website: www.uspto.gov/web/forms/sb0016_2_fill.pdf), and add as much of a description of the invention as you can muster, then send it to the U.S. Patent and Trademark Office, where it will be maintained in secret. The PTO will assign a serial number, and rights are preserved for 1 year from the Express Mail filing date. More info is available at the USPTO website: www.uspto.gov, select the Patents menu bar.
          However, be alert to these extremely important limitations:
          First, you need a complete written description. If you have photos, product literature, drawings or sketches, and technical, installation and servicing brochures or manuals, that’s fine, but the parts of the device must be labeled and/or numbered, and those labels/numbering must be tied to the written description. The written description must explain the “How To”: the essential properties, relationships and functions of the parts. You can’t leave out the secret ingredient. Listing advantages of the device is OK, but a mere “wish list” of functions without the “parts and how the device works” description is not sufficient. Descriptive skill is essential, because US Patent Law requires the disclosure to be clear, complete and detailed enough to enable one of ordinary skill in the field of the invention to make and use the inventive widget. In short, a Provisional is only as good as the description.
          Second, you must file a complete, formal, Regular Patent Application within a year after filing the Provisional. That must include a complete disclosure, formal drawings, a declaration of inventorship, and claims. You must update the description to include the current best mode of the invention.
          Third, if you plan to file internationally, you must do that within the same year. Keep in mind that if you publicly showed or sold widgets before you filed the Provisional, as in Scenarios 2 and 3, foreign rights on the basic widget are already lost.
          Fourth, to warn off copiers, it is OK to mark the widgets “Patent Pending.” Never reveal the date of filing or the Provisional Application itself, except under conditions of confidentiality.
          Fifth, if you forget to describe a vital feature in the Provisional, it may not preserve any rights. That is, you get the filing date only for what is shown in the application. If, in the meantime, you go public with the missing key feature, international rights are lost and the US Regular Patent Application won’t get the earlier Provisional priority date for that feature.

Advantages of Filing a Provisional Application

  • The US Government filing fee is cheap: currently $125 for individual inventors and small companies, and $250 for large companies (those with more than 500 employees).
  • It gets a serial number and priority date for a later Regular Application; patent claims and inventor’s Declaration are not required; a Provisional does not become a patent.
  • You get the same day filing date if you file via Express Mail (not Federal Express), deposited in the Post Office before closing time (window, not box outside). Send to: Commissioner for Patents, PO Box 1450, Alexandria, VA 22313-1450.
  • You can prepare and file the Provisional Application yourself. It can be relatively informal, but the Provisional will only be as good as your disclosure.
  • If the product evolves during the year, you can file more than one Provisional, and combine them into a single Regular Patent Application filed within a year of the first Provisional.

This article is meant as informational and educational. Mr. Dulin is a Registered Patent Attorney, a former Examiner of the US Patent and Trademark Office, former Law Clerk of the Federal Patent Court, and former Adjunct Professor of Patent Law at the John Marshall Law School and at the Santa Clara University Law School. He is a member of the Federal Patent Bar and of CA, IL, VA and WA. He is the president of Innovation Law Group, Ltd. of Sequim, WA; Tel: 360-681-7305.


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