Mistake #2: Ignoring Provisional Patents

February 19, 2020 | Written By Elana Bertram

Parlatore Law Group, Entrepreneurs Elana Bertram

This is the second post in a seven-part-series detailing the biggest entrepreneurial mistakes business owners make. The series will run over the next few weeks so check back to learn more.​ To read the first post in this series click here

A provisional patent application can be seen as an extraneous expense.  It is a placeholder for you to say, “on or before this date, I invented a thing described as…”  It establishes a date with the USPTO from which your non-provisional patent application can “claim priority,” essentially planting a flag in the sand that you were there first.  A provisional application only becomes public during litigation when it is contested that your patented invention was not fully disclosed on the priority date.  It gives you the right to claim that your invention is “patent pending,” which can be an invaluable deterrent to competitors when you are in the early stages of development.

You may be thinking that filing a patent application is not part of your long-term strategy, but you can still use provisional patents as a tool to protect your ideas while you finalize your strategy and court investors.  Imagine how much more powerful your pitch will be when you can present ideas that are “patent pending.”  You look farther along in development, more prepared, and more professional to investors. 

Many people skip a provisional patent or give it little thought because it’s just one more date to remember and one more filing fee to pay down a seemingly bottomless pit at the USPTO.  However, priority dates are extremely important.  After the America Invents Act of 2012, the US changed from a “first-to-invent” system to a “first-to-file” system more like Europe. Quite simply, you cannot patent an invention if you file after someone else files the same or similar application.

If you don’t file a provisional application, you have no ground to argue that you “filed first.”  You do not get a second chance to persuade, “swear behind,” or submit copies of laboratory notes to the Examiner. Your rights are gone. And, yes, that applies even if someone stole the idea from you.

You can still sue the thief, of course, but they filed for the patent first and if a patent issues, the thief is the patentee. If you challenge the patent, the likely result is that the patent will be invalidated, ending the rights for the both of you.  It’s not like grandmother’s priceless ring, where if you can prove that it’s yours, a judge will require the other person to give it back to you; instead, the patent is invalidated or cancelled.  You could always try to file your own application after the invalidation proceeding, but the risks are huge and the chance of success is slim. 

When you file a provisional patent prior to pitching your product to potential investors or consumers, or even prior to sending the specs to a manufacturer, you are the “first-to-file.”  Not only do you establish yourself as a savvy business-person who understands that you have valuable IP, but you also block other parties from winning the race to file an application. 

For the minimal filing fee, a provisional application can buy you up to one year to perfect your patent application and save you the cost and hardship of fighting over who filed the first application on your invention if something goes wrong during marketing or manufacture. 

I usually recommend that you use a patent attorney or patent agent to draft your provisional application. First, in the rare case that your provisional application comes into question by a third party, you will have a detailed application that contemplates a variety of embodiments and improvements in addition to a description of exactly what you have today. Your patent attorney should push you to consider alternative materials, sizes, applications, and features during the drafting process. It is up to you to be forthcoming with your patent attorney – she can’t read your mind! – and work with the application drafter to explore every possible way you can cut your competitors off at the pass when they try to capitalize on your great idea. 

A word about drawings:  you must submit “formal drawings” during the examination of your non-provisional patent. It is expected that a professional draftsman or skilled engineer will prepare these so that they are legible and meet the standards of the USPTO. You don’t need to spring for professionally rendered drawings for your provisional application, or even at the initial time of filing your non-provisional application.

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