Independent inventors often face a complex problems. Mostly they ask the question of how to present their invention to potential manufacturers without running the risk of the manufacturer “stealing” it. As a patent attorney, I run into this question all the time from inventors who are concerned about balancing the need to talk about their invention versus the need to promote and commercialize the invention. Worry no more, a provisional patent application protects your invention for a low cost and buys time to file a regular patent application. This article gives some of the basics for provisional patent application.
Table of Content
How to Stop a Manufacturer from “Stealing” Your Invention
Traditional Approaches for Protecting Inventions
What a PPA is and how it differs from a regular patent application
Deciding to File a Provisional Patent Application
Can you rely on trade secrets to avoid patenting?
Many investors think that patent protection is expensive and resort to keeping the invention as a secret. However, this approach runs counter to the way of today’s sales and marketing approach. Simply put, you need to talk to investors, manufacturers, and distributors to make progress in commercialization. However, most manufacturers (and even investors) will not sign binding NDAs for various reasons. While most potential people are trustworthy and will play fair, inventors don’t want to depend on this alone when disclosing their inventions.
Protecting your invention as a trade secret can be an effective way to keep your invention confidential, but there are a few potential problems that you should be aware of:
- Difficulty in enforcing trade secret rights: Trade secret rights are difficult to enforce, as it can be challenging to prove that someone has misappropriated your trade secret. In addition, trade secret rights are generally limited to the geographical area where you can prove that the trade secret has been used in commerce.
- Limited duration of protection: Trade secret protection lasts as long as the information remains a secret. If the trade secret is discovered or independently developed by another person, the trade secret protection will be lost.
- Difficulty in preventing reverse engineering: It can be difficult to prevent others from reverse engineering your invention, which can lead to the loss of your trade secret.
- Difficulty in licensing or selling your invention: If your invention is protected as a trade secret, it can be difficult to license or sell the invention to others. This can limit the potential revenue that you can generate from your invention.
- Difficulty in proving ownership: If someone else independently develops your trade secret, it can be difficult to prove that you were the original owner of the trade secret.
- Difficulty in protecting against internal threats: if an employee or a contractor with knowledge of the trade secret leaves the company, it can be difficult to prevent them from disclosing the trade secret to others.
It’s important to consider these potential problems when deciding whether to protect your invention as a trade secret. In some cases, it may be more appropriate to protect your invention through patents or other forms of intellectual property protection. It is also important to have a robust trade secret protection plan in place and to consider the legal and practical implications of protecting your invention as a trade secret.
So what can you do? Filing a regular patent application can be a tedious task and may prove costly if you use an attorney.
The solution: Filing a Provisional Patent App (PPA)
Congress offers inventors another option like filing a provisional patent application on the invention (PPA). A PPA is a way for an investor to claim pending patent status for 12 months. However, it requires a fraction of the time and costs of a regular application for a patent.
A provisional patent application comprises text and drawings. These documents describe how your invention works with as much details as possible in your own words. It should be a technical description of how the invention works, but since you are the inventor this should be easy. No legalese is needed!
An effective filing of your invention presides this. You can then use the term “patent-pending” to refer to your invention for 12 months after that date. To get the provisional application to issue as a patent, you can file a regular application for a patent within one year.
How PPA differs from a regular patent application
It is cheaper.
While PTO fees constantly change, as of January 2023, a PPA costs around $130 for small entity and $64 for a micro-entity if you quality. This amount is far less than the thousands to tens or tens of thousands of dollars it takes to conduct a patent search and to prepare a complete non-provisional patent application.
It’s Easy to do.
The cost of the provisional application is low because it is not examined and the process does not grant you a patent. It is simply a placeholder for your description of the invention. As such, anything can be included in the provisional application. That said, you should describe your invention in as much details as possible. Consider adding lots of diagrams or photos of your invention is another good way to have depth in the description as “one picture is worth a thousand words.” Also, if you have internal documentations on the operation of the system, the maintenance of the system, and user manuals, put them all into the provisional application to be safe.
Providing as much detail as possible in a provisional patent application can be beneficial for several reasons:
- Improves the chances of getting a patent granted: The more detail that is included in the provisional application, the more likely it is that the invention will be considered novel and non-obvious by the patent office. This can increase the chances of getting a patent granted.
- Increases the scope of the claims: A provisional application that includes more detail can help to define the specific features of the invention that are novel and non-obvious, which can help to increase the scope of the claims in the non-provisional application.
- Increases the value of the patent: By including more detail in the provisional application, it is more likely that the patent will be more valuable, as it will be more likely to cover a broader range of potential uses and implementations of the invention.
- Increases the chances of being able to license or sell the invention: By providing more detail in the provisional application, it is more likely that the invention will be considered more valuable and attractive to potential licensees or buyers.
- Increases the chances of being able to prevent others from copying the invention: By providing more detail in the provisional application, it is more likely that the invention will be considered unique and original, which can make it more difficult for others to copy.
- Improves the chances of being able to prove ownership: By providing more detail in the provisional application, it is more likely that the invention will be considered unique and original, which can make it more difficult for others to claim that they independently developed the invention.
- Increases the chances of being able to defend the patent in court: Detailed provisional application can be used as evidence in court to demonstrate the inventors’ conception of the invention, which can help to defend the patent in court.
In summary, providing as much detail as possible in a provisional patent application can be beneficial in increasing the chances of getting a patent granted, increasing the scope of the claims, increasing the value of the patent, and increasing the chances of being able to license or sell the invention, and defend the patent in court.
While you decide whether you wish to file for a regular or provisional patent, the PPA allows you to preserve your rights for a one year period, after which you must convert to a non-provisional application to keep the early filing date of the provisional application.
How to File a Provisional Patent Application
The provisional application papers (written description and drawings), filing fee and provisional cover sheet can be filed electronically using the USPTO Patent Center or filed by mail.
Electronically Using Patent Center: The provisional application documents can be filed electronically at the USPTO only if the Patent Center is used. The Patent Center allows patent applications, including provisional applications, to be filed securely via the Internet. You can prepare your provisional application in the Portable Document Format (PDF), attach the documents, validate that the PDF documents will be compatible with USPTO internal automated information systems, submit the documents, and pay fees with real-time payment processing. When fillable EFS-Web forms are used, the data entered into the forms is automatically loaded into USPTO information systems.
By Mail: The provisional application and filing fee can be mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Benefits of Filing A Provisional Patent Application
Understanding the advantages of filing for a PPA is an excellent place to start.
It allows you one year to decide whether a patent is proper for you. After filing the provisional application, you will have one year to decide if you want to file a regular patent application.
This allows you to assess the potential commercial value of your invention. If you get “No thanks” from everyone who sees it, it could be that you decide it is not worth spending the thousands or tens of thousands of dollars to prepare a patent application.
#2. No Claim drafting is required
To prevent others from copying your invention, you will stake a claim on it. The placing of these words on an advertisement or at the bottom of your invention assists in indicating that a claim of the invention is in place. This discourages manufacturers from infringing your idea.
#3. You Meet the First To File requirement
You determine the “date and year of the invention.” The U.S. Patent and Trademark Office follows a “first-to-invent” rule. In case of a dispute, the patent is given to the inventor who filed first.
Although not all inventors have the resources to create prototypes and test them, not all inventors record their creations. Therefore, provisional patent applications are often the most cost-effective and quickest way to establish the date. Your rights will begin from the provisional date, even if the patent is granted later.
#4. Cost Savings
Obviously you can save significantly when you prepare and file the provisional application yourself. However, provisional applications should not be taken lightly and you should provide abundant technical details on the operation of the invention. Meeting the requirements of Section 112 can prove critical to future efforts to enforce an issued patent. If you lack operative details on the invention, “saving money” on a provisional application can, in fact, have a very high price. Thus, you may consider a twin approach of preparing the provisional application and consult with a patent attorney to ensure you have sufficient information in the provisional application
Caveats with Provisional Patent Applications
The advantages give you the morale to start on your provisional application. However, though, you should know that provisional patent applications may not be a panacea.
Inaccurate or insufficient disclosure of your invention may substantially reduce your patent protection. For instance, failure to include an element of your invention or fully explain the operation elements subjects your application to rejections when your application is converted into the non-provisional application. Inaccuracies can also include incorrect supporting data and drawings that do not match the written description. This is because the provisional patent application needs to satisfy the legal requirements of “Section 112,” which currently states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 35 U.S.C. § 112.
Thus, the details in provisional applications should not be taken lightly and should be prepared with a high level of details on how the invention works. Meeting the requirements of Section 112 can prove critical to future efforts to enforce an issued patent.
Changes to the invention
To make changes to an existing provisional patent application, you must file another PPA. You can modify how your invention works or add technical information not covered by the original PPA. If you wish to protect these changes, you will have to file another one.
Conversion to Non-Provisional must be within a year
If you miss the conversion deadline, the result may be fatal, so we suggest working on the non-provisional as soon as financing permits. In many instances, if you miss the one year deadline, you can just simply refile and not rely on your earliest filing date. However, if you make offers of sales or actual disclosures of your invention during the year and fail to timely convert (and thus loses the early priority date), the on-sale bar or the public dissemination of your invention can be used to knock out your subsequent patent. Thus, it is crucial to convert within a year.
Foreign Patents must be filed within a year
You must file foreign patent requests within one calendar year of the provisional application. Failure to file foreign patent protection applications within a year of the date of your provisional application will result in you losing any rights to benefit from your filing date in a foreign country.