Posts Tagged: "provisional patents"

The question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO).  Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.  Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.

Executives that have decision making capacity within any innovation-based organization, whether a young startup or a Fortune 500 corporation, almost universally have little or no familiarity with patents from a legal perspective. Sometimes these leaders also have little familiarity with science or technology, and are hired because they are particularly adept in leading a rapidly growing company with hopes of an initial public offering (IPO), or because they have shown a particular facility with raising ever increasing rounds of capital from investors, or for their ability to make returns to early investors on their capital investments. Whatever the case, after a high-tech startup has outgrown the founders as being the top leaders in the C-suite, it is commonplace for the top decision makers in those high-tech companies to be far more familiar with the business and marketplace realities facing technology companies than the actual science and technology that made them high-growth darlings in the first place.

Many people ask: can ideas be patented? The short answer is no. Unfortunately, despite what you may have heard from late night television commercials, there is no effective way to protect an idea with any form of intellectual property protection. Copyrights protect expression and creativity, not innovation.  Patents protect inventions. Neither copyrights or patents protect ideas. This is not to suggest that ideas are not valuable, but they are not valuable in the same way or sense that pop culture has led many to believe.

I’m not alone in thinking that at least a provisional patent application is extremely important. Stephen Key, the preeminent inventor coach in the United States, advises all his students to at a minimum file a provisional patent application on their inventions in order to establish what he calls “perceived rights.” Key’s strategy, which has been successfully followed by hundreds of his students who do find licensing deals, is to place that marker in the sand and define an invention with a provisional patent application.

Provisional applications can be a very useful tool, but only when they are done right. When provisional patent applications are done poorly you not only obtain no benefit, the filing potentially demonstrates you were not in possession of an invention, which could be catastrophically bad.

Although there is a popular misconception among inventors new to the field of inventing, the United States Patent and Trademark Office is never going to grant a provisional patent. A “provisional”, as it is sometimes called, is a type of patent application. A provisional application for a patent can be filed at the United States Patent and Trademark Office in order to establish priority of invention, which is critically important given that the United States is now a first to file country. Although the U.S. is not a pure first to file country it is safest for inventors to assume that first to file laws do set up a race to the Patent Office. Therefore, it is essentially in virtually all cases for an inventor to file a patent application first — before anyone else who may also be working on the same invention. This is where a provisional application for a patent can be extremely useful.

I am frequently asked by inventors whether they should file a patent application before seeking to license their invention. Some even ask whether they should first obtain a patent before they submit the invention to a licensing company… I always tell inventors and entrepreneurs that the best invention to patent is one you will make money with regardless of whether you ultimately obtain a patent. After all, if there is not a market for the invention why would you ever consider spending the time and money to obtain a patent? The goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent.

This page and website contain contain detailed information to help inventors on the road from invention to patent… Below are a sampling of inventor help links to specific patent and invention related information throughout our website. As you read these articles you will invariably come across links to other articles of interest, which you can and really should read. While I believe inventors should take the time to read all of the pages throughout IPWatchdog.com, I have gone through the IPWatchdog.com archives and created several “reading assignments,” which will hopefully make the task of figuring out where to start more manageable, and which will help get you started. I recommend you do them in this order (i.e., starting with Reading Assignment 1), but if you find something that you just need to know then by all means jump ahead. You can also visit our Inventor Education Archive as well.

There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a provisional patent. The first thing that needs to be said is that there is no such thing as a provisional patent. Instead, what you file is called a provisional patent application… Now that the United States has become a first to file country and abandoned our historic first to invent ways it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.

One big mistake inventors make is they will go on page after page in their draft patent application about how they came up with the idea for the invention, what the market for the invention is and how they plan on tapping into that market. None of that is appropriate for a patent application. Various pieces, perhaps even all of it, would be appropriate for a business plan. So the first thing inventors need to understand and really internally appreciate is that a patent is NOT a business plan. If you are going to attempt to raise money to pursue your business objectives you will undoubtedly need a business plan and attaching a well drafted and previously filed patent application as an appendix can be useful at times, but a business plan and a patent application play very different roles.

The patent process can be overwhelming and quite costly for an inventor who wishes to secure patent protection on their invention. But there are certain steps of the process that should not be neglected because of financial constraints, otherwise your efforts could actually be counterproductive and work against you in the end… In other words, even if you qualify as a micro entity, which entitles you to pay 25% of the regular USPTO fees, the fees due just to the federal government will more than eat up a $600 budget and that is if you represent yourself, which can be quite risky.

Once you get that first provisional patent application filed you are ready to approach others for assistance with your invention. You have a measure of protection, but never forget you have no exclusive rights until the patent ultimately issues. You should also still get a confidentiality agreement signed by anyone who provides assistance to you. While the clock in the US is ticking to file the nonprovisional, the real important significance of confidentiality agreements after a provisional filing is so that those who assist you will not run off with your invention on their own. With this in mind, it is ABSOLUTELY CRITICAL that you get an assignment of rights with respect to any protectable aspects provided by those giving you assistance.

If serial provisional patent applications seems like a good strategy for Wal-Mart, which is one of the largest corporations in the world, and if serial provisional patent applications is recommended by the likes of Gaudry and Franklin at a well respect law firm like Kilpatrick Townsend, why wouldn’t serial provisional patent applications be an appropriate strategy for inventors, small businesses and start-ups working with a shoestring budget?

To investigate whether applicants have been adopting a strategy of filing more provisional applications, we determined a ratio of the number of provisional filings (with a first-named inventor identified as being a resident of the U.S.) relative to the number of utility filings (with a first-named inventor identified as being a resident of the U.S.). As shown in Figure 2, this ratio also exhibited an uptick in fiscal year 2013, but the ratio has since returned to Fiscal-Year-2012 levels. Thus, this data suggests that applicants have generally not changed their filing strategies to file more provisional applications in view of the AIA’s change to define prior art based on applications’ filing dates.