INVENTIVE STEP

A provisional patent application is a patent application that may be filed at the PTO that can be used to establish a filing date or date of invention.  The application expires 12 months from its filing date.  This means that, in order to claim the benefit of the provisional application filing date, a non-provisional or foreign patent application must be filed within that 12 month period.

There is no such thing as a “Provisional Patent”, although you may hear that term.  A provisional patent application does not give the inventor any rights to exclude, as an issued patent does.

The PTO does not examine provisional applications, but merely keeps them in its records.  Filing a provisional application does not get the invention examined any more quickly; in fact, the application does not go into the examination queue at all, so it actually takes longer from the initial filing date of the provisional application to begin examination than if a non-provisional application were filed initially.

The public does not get access to a provisional application unless and until a non-provisional application that claims the benefit of the provisional application filing date is published.  A provisional application can delay publication of the invention, even if the applicant will be filing outside the US.

Why File a Provisional Application?

The main reason is actually the delay.  The provisional application gives an additional 12 months to further develop the invention and to see if there is a market for the invention, and it can also delay prosecution costs associated with the application.

First, it often takes a long time to perfect a new product or process.  There are many details to work out and many improvements can be made in the early stages after the initial concept is completed.  To establish an early date of invention, a provisional application can be filed once the initial concept is completed, but prior to the perfection of the invention.  The 12 months before the non-provisional application must be filed can be an aid in this endeavor.  Additional provisional applications can be filed during the 12 month period to establish an invention date for any improvements.  Various strategies exist for which applications should be used for a priority claim.

Second, a provisional application delays some of the expenses associated with obtaining a patent.  For example, the filing fee for a provisional application is currently only $260/130/65 (large/small/micro entity), while the filing fee for a non-provisional application is $1600 ($730 for small entity filed electronically/$400 micro entity).  There are additional fees for excess claims, prosecution fees, and issue and publication fees.  It may be advantageous to delay these fees until it is determined that there is a market for the invention.  A provisional application gives the application 12 months to find investors, buyers, or licensees for the product or process.

A provisional application can be a good way to be certain that the inventor’s own activities will not be available for use as prior art.  If there is an imminent publication or product launch of the invention, say in a few days, and there is not time to prepare a complete and thorough application, a quick provisional can be helpful.  A complete non-provisional should be filed as soon as possible thereafter, it is not necessary and can be dangerous to wait the entire 12 months prior to doing so.

Now that the US has transitioned from a first-to-invent to a first-to-file regime, filing a provisional application may be even more important.  Given that the grace period is severely restricted and that you need to beat any other potential filers to the Patent Office, filing a provisional application and later following up with a non-provisional can be a great strategy.  If you need to publicly disclose your invention, file a provisional application for it first.

Is a Provisional Application Cheaper?

There are ads on Google for $99 or $149 provisional patents.  It can be cheap to file a quick application to protect against public disclosure as noted above.

Many people believe that filing a provisional application is a simple thing.  Some inventors will do it themselves, before going to a patent attorney for a non-provisional application a year later.  Others want their attorney to prepare a bargain application of maybe a few pages or so.  After all, provisional applications don’t even require claims.

Sometimes, it is necessary to file a quick and dirty provisional application, such as where there is going to be an imminent product release or publication that could create a bar to getting a patent in the future.  In general, however, it is not cheaper to prepare a provisional application than a non-provisional application.

In order for a later-filed non-provisional application to obtain the benefit of the filing date of a earlier provisional application, US patent law requires that the claims of the non-provisional application be supported by the provisional application.  What this means is that an applicant must include sufficient detail in the provisional application in order for it to do any good.  Otherwise, you are only entitled to the filing date of the non-provisional application.  In that case, the provisional was a waste of time and money and the delay in filing the non-provisional application may be detrimental to obtaining a patent for the invention.

Applicants should take the time and spend the money to have a good provisional application prepared that includes as much detail as is available at the time of filing the provisional application.

In summary, a few points are worth mentioning or repeating:

• A provisional application can be a good idea to establish an early filing date and to give additional time to perfect the invention or work on improvements, as well as to determine whether there is a market for the product or process.
• A provisional application can also be a good way to delay filing and prosecution costs until a later date.
• A provisional application should not be filed until the invention includes sufficient details to reduce the invention to practice.
• Provisional patent applications should include sufficient detail to support claims in a later-filed non-provisional application.
• A provisional patent application permits the applicant to mark a product as “patent pending.”
• A quick provisional application can be filed to protect against public disclosure provided that a complete non-provisional application is filed shortly thereafter.

For a company with substantial intellectual property in hand and under development, it is important to have employment agreements for new employees that include clauses for dealing with intellectual property rights.

When hiring new employees, be certain to have IP disclosure and assignment clauses in employment agreements for all employees.  These clauses should require the new employee to promptly disclose new inventions or other intellectual property to the employer upon conception and to assign such inventions to the employer at that time.  Be certain that the agreement is clear that the employee has an obligation to assign new inventions to the new employer as a part of the employment.

Have all new employees sign such agreements prior to employment or at least on the first day.  Some states may require additional consideration once employment has already commenced for such clauses to be valid.

When preparing such agreements, keep in mind that certain words have specific definitions or understandings in patent law.  For example, ambiguity could arise as to whether the employee would “conceive” and “make” an invention.  Try to stick with the definitions that are common to patent law.  “Conception” refers to “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied to practice.”  This is more than just a vague idea, it requires definite plans for how to implement the invention.  “Make” or “reduction to practice” refers to the act of actually making the invention work for its intended purpose.

Next, to avoid a dispute as to whether the employee developed the invention prior to employment, when executing the agreement, give the new employee the opportunity to indicate that he developed the invention prior to commencing employment.  Require that he prove this development by providing sufficient detail that he can’t later argue that vague statements constitute conception.  Unless the parties agree otherwise, the employee should retain all rights in inventions that he conceived or invented prior to commencing employment.  To reduce the chances of a dispute regarding this issue, try to get it out there early in the process rather than waiting until later.

Finally, use language that requires the employee to promptly disclose inventions to the company and to “hereby assign” all future inventions.  The assignment is not required later once the employment has ended and you need to chase the employee and potentially sue him.  Instead, make it effectual as soon as inventions are conceived.

Former employees are not always cooperative in the patent process for their former employers.  You should probably include language the grants the employer at least a partial power of attorney to execute documents on behalf of the former employee inventor in cases where that becomes necessary.

A question that is often asked by new inventors is:  should I do a prior art search before filing a patent application?  The answer, as in most areas of law and life in general, is that it depends.

For individual inventors and smaller companies including start-ups, in most circumstances, I would suggest that yes you should do a prior art search.  Many larger companies have a number of scientists and technologists who are familiar with the technology and what their competitors are doing.  They can also absorb the potential risks of not doing a prior art search.  Most small entities and start-ups do not and can not.

Many, if not most, new inventors are convinced that they are the only ones that have thought of the idea that they seek to patent.  They believe that they have had a flash of insight that no one else has had.  They may even do a bit of Internet research to convince themselves that they are in the clear and that there is no need to do a prior art search.  They are often surprised by the results when they do have a search conducted.

The risks of not doing a search are several.  First, and most importantly, if you plan to commercialize or market the invention as a product or service, you don’t want to get slapped with an infringement lawsuit right out of the gate.  These suits are extremely expensive even if you don’t get hit with a large damage award.  There is a risk that you will not be able to afford to defend such a suit and that all of your hard work in developing the invention, getting it through the prototype stage, and getting it to market would be wasted.  Usually, there is a significant monetary and time investment involved with these steps.  There is also a risk that a court could issue an injunction that would prohibit you from making, using, selling, or offering the invention for sale.

Second, conducting a prior art search prior to preparing a patent application may make prosecution of the application more efficient and cost-effective.  By knowing the closest prior art, the patent application and the claims may be prepared more strategically to take advantage of areas of patentability.  Claims may be prepared that get close to the prior art without encroaching on it.  It may be possible to develop arguments and strategies for convincing the patent examiner that the invention is non-obvious vis-a-vis the prior art.

You may find that the invention needs to be reconfigured to “design around” patents that are found.  This could add to the value of the invention and potentially give you a competitive advantage.  You may find, however, that someone else has a patent that directly prevents you from patenting your invention.  In such a case, you may determine whether to abandon your endeavor or seek to partner with or secure a license from the patent holder.

The main disadvantages of conducting a prior art search are that it will cost some money and that any material prior art that is uncovered must be disclosed to the Patent Office during prosecution of any patent application that is filed for your invention.  The cost is usually not significant in the overall scheme of bringing a new product or service to market and preparing and prosecuting a patent application.  In fact, a good prior art search can make these endeavors more efficient.  Most patent applicants are looking for strong patent protection in which case it is not a disadvantage to bring prior art to the patent examiner’s attention.  This will permit the patent to be “vetted” over that prior art.

Mechanics

A patent attorney can assist you in having a prior art search performed.  A brief written description and possibly a few drawings or sketches of the invention should be prepared.  This information is provided on a confidential basis to a professional patent search firm that will conduct the patent search.  These firms are usually located in Northern Virginia near the PTO and are staffed with engineers and scientists, at least some of whom may be former patent examiners.  The search firm provides the information to a person with skill in searching the subject matter of the invention who conducts the search.

A good “freedom to operate” and patentability search takes a couple of weeks to complete and usually costs less than $2,000, often less than $1,000.  For a “freedom to operate search,” the searchers will search that claims of US patents that are currently in effect.  For a patentability search, the searchers will also search for older US patents, foreign patents, and non-patent literature that may disclose the invention.

The results will typically include a stack of the closest 20-30 patents and other prior art references.  My practice is to provide these results to the inventor with instructions to review them in detail and to bring any that the inventor believes warrant further review by me to my attention, in any event the closest 3-4.  This saves on attorney time of having to review the entire stack.  The inventor is usually in the best position to determine any differences or similarities between the references and the invention.  At that point, we determine how best to proceed with the matter based on the search results.

One might reasonably ask why the inventor or the attorney cannot themselves conduct the prior art search on Google, the PTO website, or another search engine.  One answer is that it is far more efficient for these experts to perform the search than for the attorney to do so.  Their hourly rates are typically much less.  Second, I am always amazed that the professional searchers find prior art that I or the inventors have not been able to find.

In sum, I almost always advise a new inventor, small company, or start-up to have a prior art search done prior to marketing the invention or preparing a patent application.  In my opinion, the advantages of such a search far outweigh the risks or costs of doing so.

A patent permits its owner to exclude others from making, using, selling, offering for sale, or importing the patented invention without his permission.  A patent is, however, unique to the country where it is granted.  Thus, if a patent owner does business in more than one country, it would be necessary to obtain a patent in each country to protect the invention.

Some countries have restrictions on what can be patented.  For example, some countries do not permit patenting software, business methods, drugs, or methods of treatment for humans.

PCT Applications

One way to obtain patent protection in multiple countries is to file an application under the Patent Cooperation Treaty (PCT).  A PCT application is an international application that is filed through the World Intellectual Property Office (WIPO), where an applicant can designate a large number of countries in which he desires to file his patent application.  Currently, 146 countries are members of the PCT.

A PCT application does not give the applicant an “international patent”, as all patents are national in nature (although certain organizations like the European Patent Office (EPO) issue a “European Patent” that must be registered in each member country where the applicant desires the patent to be in effect).  Instead, the PCT provides a mechanism that gives the applicant 30 or 31 months from the earliest filing date (the first filed patent application) to determine whether to file the patent application in various individual countries.  A PCT application can either be the first filed application for an invention or it must be filed within 12 months of the first filed application.

The PCT also provides an International Search Report and an examination, if desired, so that the applicant can get an early search performed to see if the invention is patentable.  The delay also permits the applicant to determine whether the invention is commercially valuable and whether it is worth spending the money to obtain a patent in each country.  While applicants may designate all 144 countries at the time of the PCT filing, they can decide later in which individual countries they would like to pursue patent protection.

A PCT application can also save money on translation costs early in the process.  While most individual countries require patent applications to be filed in the native language of that country, PCT applications permit applicants to delay the cost of translating the application into the various languages.

Once the 30 or 31 month period from the first filing date elapses, a PCT applicant must “enter the national stage” in each country where a patent is desired.  Otherwise, the application is abandoned and patent protection cannot be obtained.  It is at this stage where translations must be obtained and filing costs for the various countries must be paid.

Each country usually requires that the applicant work through an attorney or patent agent who is registered to practice before that country’s patent office.  Thus, to obtain a patent in Brazil, the applicant must work with a Brazilian patent attorney or agent.  These attorneys and agents charge fees for their services, further adding to the costs of obtaining patent protection in various countries.

If the PCT procedure is not utilized, applicants must file in each individual country within a year of the filing date of the first filed application.  The translation, filing, and agent costs are due at that time.  A primary advantage of the PCT is the 18 to 19 month delay for these costs.

While 146 countries are currently members of the PCT, there are several significant countries that are not members; these include Argentina, Paraguay, Uruguay, Venezuela, Taiwan, and the Middle East.  To obtain patents in these countries, a patent application must be filed in each within 12 months of the first filed application.

Patent Prosecution Highway

The United States PTO has entered into an agreement with 21 other patent offices called the Patent Prosecution Highway.  Under this program, once a patent claim is found to be allowable by the patent office where the application was first filed, the applicant may request that other patent offices fast track examination of the application.  This is a type of work-sharing program intended to cut reduce redundancy in examination.