Provisional patent applications can be a useful tool for protecting software inventions, but they are not a “secret weapon” for software protection. The reason is that provisional applications insert a potential one-year delay before the non-provisional filing, and thus delay examination by a year. As a patent attorney who works with fast-moving software startups, my experience is that most startups prefer their patent to issue yesterday so that they can tout the patent during investor pitches. As such, a non-provisional patent application may serve the needs of software startups better.
what is a provisional patent application (pPA)
A provisional patent application is a type of application that allows an inventor to establish an early effective filing date for a non-provisional patent application, without the need to fully claim or describe the invention. By filing a provisional patent application, the inventor can claim “patent pending” status for the invention, which can help deter competitors from copying the invention.
The main advantage of a provisional patent application is that it allows the inventor to establish an early effective filing date, which can be useful in cases where the software invention is not yet ready for a full patent application.
However, a provisional patent application is not a substitute for a non-provisional patent application and it does not provide any patent rights. A provisional patent application must be followed by a non-provisional patent application within 12 months of the provisional application’s filing date. The non-provisional patent application must include the same description and drawings as the provisional application, and it must fully claim and describe the invention in order to be granted a patent.
Provisional patent applications can be a useful tool for protecting software inventions, but it should be used in combination with other strategies, such as trade secret protection, and non-disclosure agreements. It’s always a good idea to consult with a patent attorney to discuss the best strategy for protecting a software invention.
Cost of filing a provisional PPA
If you have invented a software invention and would like to secure your intellectual property rights, filing a Provisional Patent Application (PPA) may be the answer. PPAs are relatively inexpensive and have several advantages over a regular patent application. However, there are also several disadvantages. You should carefully consider the costs and benefits of filing a PPA, especially if you are not sure whether it is worth the money.
The first cost of filing a provisional PPA is the time and effort you put into preparing the document. This can be either an attorney-assisted or a do-it-yourself approach. Depending on the professional you hire, the fees can range from $2,500 to $15,000. It is important to consult a patent lawyer to ensure you have the best possible protection for your invention.
A second cost is the official filing fee. This can be either $150 or $75, depending on the size of your entity. Small companies are charged a lower fee. Inventors can also reduce the official filing fee by filing a micro entity certification.
To file a PPA, you must prepare a coversheet, which must include the signatures of all inventors and the required information. Once you have prepared the document, you can submit it electronically at the USPTO. Also, you should include a PDF version of the patent application.
Your provisional patent application must be written properly to be considered valid. While there are less formal requirements than a full utility patent, it is still essential that you describe your invention thoroughly. There are several ways to do this, including by using a hand sketch or by creating a computer-drawn set of drawings.
After you have filed a PPA, you have a one-year period to decide if you want to file a regular non-provisional patent. This is a valuable opportunity to evaluate the value of your invention and make the decision whether you want to invest in a patent. Additionally, a PPA can allow you time to finalize business plans and to hone your invention’s finer details.
For startups that lack money, there are advantages to using a PPA. For example, the PPA gives you a year to market and decide whether your invention is worth investing in. It also preserves your rights while you are deciding whether to file a regular patent.
Lifespan of protection increase from 20 years to 21 years
It is true that the combination of a provisional patent application (PPA) followed by a non-provisional utility patent application can add up to 21 years of patent monopoly, assuming the patentee files for maintenance fee and the patent is not extended by regulatory delay.
When a PPA is filed, it establishes an early effective filing date for the invention, but it does not provide any patent rights. The PPA must be followed by a non-provisional utility patent application within 12 months of the PPA’s filing date.
Once the non-provisional utility patent is granted, it gives the patentee the right to exclude others from making, using, selling, or importing the invention for a term of 20 years from the date of application. Patentees also have to pay maintenance fees to keep the patent in force.
It’s worth noting that this 21-year monopoly period is a maximum term, and in some cases, the patent may expire earlier. For example, if the patentee fails to pay the maintenance fees, or if the patent is found to be invalid or unenforceable in court.
It’s also important to keep in mind that a patent monopoly is not absolute, and that there are limits to what can be protected by a patent. Additionally, a patent does not guarantee commercial success. A startup should consider other forms of IP protection such as trade secret, copyright, and trademark, as well as other business strategies such as licensing, partnerships and building a strong brand.
Pros and cons of a one year delay in software patent examination
The extra year delay that a provisional patent application (PPA) provides can be beneficial for a software startup, as it allows the startup to have more time to further develop the software, test it, and determine the best way to commercialize it.
The extra year allows the startup to:
- Conduct further research and development: The startup can use the extra time to further develop and test the software, which can help to identify any potential issues and to improve the software’s functionality.
- Evaluate the market: The startup can use the extra time to evaluate the market and determine the best way to commercialize the software. This can help the startup to identify potential partners, customers, and competitors.
- Raise funding: The startup can use the extra time to raise funding, which can be used to further develop and commercialize the software.
- Gather additional data: The startup can use the extra time to gather additional data about the software, such as user feedback, which can be used to improve the software and to strengthen the patent application.
However, it’s important to note that a provisional patent application does not provide any patent rights, and it must be followed by a non-provisional patent application within 12 months of the provisional application’s filing date. Also, the startup must make sure that it will be able to file a complete, non-provisional patent application within 12 months of the PPA. Examination of the invention is only done for the non-provisional application, and can take up to 2 years after the filing of the non-provisional application. Thus, with the PPA and non-PPA combination, examination may not occur until the third anniversary of the provisional filing date!
Examination delay can be undesirable for a fast-moving field such as software, as it can take several years for a patent application to be examined and granted. During this time, the technology or software may have changed significantly, and the patent may no longer be relevant or useful.
In the software field, new technologies are constantly emerging and the market is constantly changing. A delay in examination of a patent application may mean that by the time the patent is granted, the software has become obsolete or new technologies have emerged that make the software less valuable.
Additionally, the delay in examination can also cause uncertainty for the software startup. The startup may have invested significant resources in developing and commercializing the software, and the delay in examination can make it difficult for the startup to plan for the future and to make important business decisions.
The United States Patent and Trademark Office (USPTO) has implemented several programs to reduce the examination delay such as the Track One Prioritized Examination, and the Accelerated Examination Program. These programs are designed to speed up the examination process for certain types of patent applications, such as those related to software.
The USPTO has a streamlined process for approving and prosecuting patents, but if you’re considering filing a patent for a new software innovation, you’ll need to know your options. It’s no secret that the software industry is highly dynamic, and the lifespan of a particular technology can vary drastically. Having a comprehensive software patent strategy will allow you to focus on maximizing the value of your patent while minimizing the risk. By working with a qualified attorney, you’ll be able to reap the rewards of your innovation while ensuring that your intellectual property is safeguarded.
In conclusion, using a PPA can be a good strategy for a software startup, but the startup should also consider other strategies, such as trade secret protection, and non-disclosure agreements. It’s always a good idea to consult with a patent attorney to discuss the best strategy for protecting a software invention.