Provisional Patent Applications: Quickest Way to "Patent Pending"
Filing a provisional patent application guards against rip-offs while buying time to file a regular patent application.
Independent inventors are often faced with a nettlesome issue: how to show their brainchild to potential manufacturers without the risk that the manufacturer will "steal" the invention. Luckily, Congress has authorized a procedure that offers protection when shopping new inventions -- the provisional patent application (PPA).
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How to Prevent a Manufacturer From "Stealing" Your Invention
Although most potential manufacturers can be trusted to play fair, few inventors wish to rely exclusively on trust when disclosing an invention. But for a variety of sensible reasons, most manufacturers are unwilling to sign binding nondisclosure agreements before even seeing an invention. (If you do find a manufacturer willing to sign a nondisclosure agreement, you can learn more about the relationship between trade secrecy and inventions here).
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Traditional Approaches to Protecting Inventions
To resolve this standoff, inventors have traditionally used two approaches to protecting their invention when disclosing it to potential manufacturers.
- Document building and testing process. Some build and test an invention before arranging a show-and-tell session with a potential manufacturer. If they have carefully documented the building and testing process, they can later disprove the manufacturer's claim to be the true inventor if a ripoff is attempted.
- File a regular patent application. Or, an inventor may file a patent application and mark the invention with a "patent pending" label before shopping it around. Few manufacturers will risk ripping off an invention if they realize they may later be hit with a patent infringement lawsuit if the patent is ultimately issued.
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What can I do if a company uses my idea without permission?
Problems with the traditional approaches. Unfortunately, both of these approaches are increasingly flawed. As technologies become more complex -- biotechnology, nanotechnology and software development come to mind -- independent inventors find it harder to build and test inventions based on them. And filing a regular patent application is a lot of work and can be very expensive if an attorney is used.
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The Solution: File a Provisional Patent Application
Congress gives inventors a third approach: File a provisional patent application (PPA) on the invention. Filing a PPA allows an inventor to claim "patent pending" status for the invention for 12 months, but involves only a small fraction of the work and cost of a regular patent application.
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How to File a Provisional Patent Application
To file a PPA, you must pay a $100 fee ($200 for large companies) and file:
- a detailed description of the invention telling how to make and use it (the legal standards for the description are the same as those for a regular patent application)
- informal drawing(s), if they are needed to understand how to make and use the invention
- a one-page cover sheet
If you have written a technical paper for a journal, you can submit it as the description of the invention, as long as it meets the legal standards for describing how to make and use the invention.
What you don't need. Because the PPA is considered a legal substitute for building and testing the invention (which is called "actually reducing the invention to practice") and is not intended to be a regular patent application, you don't need to include:
- an abstract or summary
- patent claims
- a Patent Application Declaration (a statement under penalty of perjury that you are the true inventor and have disclosed all information you know that would be relevant to the examination of the application), or
- an Information Disclosure Statement (disclosure of all relevant prior art known to you).
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Should you do a patent search?
Before you file a regular patent application, you must do a search to see if your invention already exists and is patented. Should you do this before filing a PPA? The patent world doesn't agree on the answer.
Some say it's not worth the effort to do a search -- better to file the fee and search later. Others take the middle ground -- do a free Internet search before filing the PPA and then pay for a more extensive search later.
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After You File a PPA
If you file a PPA so that you can claim patent pending status, but then decide not to follow up with a regular patent application, your PPA will be thrown away after one year. You can still file a regular patent application later, but you won't be able to get any benefit from the earlier PPA filing date.
If you file a regular patent application within one year of filing the PPA, you can claim the PPA's filing date and can rely on its date if necessary. Two reasons you may wish to claim the earlier filing date on your invention are:
You want to rely on the PPA filing date to prove that your invention came before other similar developments (called "prior art") that would block your claim to invention.
A competing patent application claiming the same invention was filed after your PPA but before your regular patent application and the U.S. Patent and Trademark Office (USPTO) has declared an "interference."
Your regular patent application may include any new matter (technical information about the invention) that wasn't in the PPA, but you won't be able to rely on the PPA's filing date for any such new matter.
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Do Not Be the Target of an Invention Promotion Scheme
Several inventors have fallen pray to invention promotion companies promising the patentability and marketing of your invention. These companies charge excessive fees for their services, and many times cannot deliver what you expect. Remember when dealing with these companies you may not have the option of choosing your own attorney or agent, as the company will assign your case to one of their own. You may also be promised that your invention is patentable, only to find out the company did not research your invention on your behalf and the patent office has rejected your case. The following are ten important questions you should ask any promoter contacting you regarding your invention:
- How many inventions have been evaluated in the past 5 years; how many have received a positive evaluation, and how many have received a negative evaluation.
- How many customers have contracted with the company in the past 5 years (excluding those who have purchased trademark show services, research, advertising, or other non-marketing services or those who have defaulted in their payments to the company.)
- How many customers have received a net financial profit as a direct result of the services provided?
- How many customers have received license agreements for their inventions as a direct result of services provided?
- What other names and previous addresses has the company or it’s officers collectively or individually been affiliated with in the past 10 years?
- Is there an up-front fee, how much and what does it get you? What is the total cost including submission, patent and license agreement?
- Has the company ever been investigated by the FTC, BBB, any consumer protection agency or an Attorney General’s Office? When and where?
- Who selects/pays for the patent attorney or agent to do the search, patentability opinion and application preparation?
- Provide the names, addresses and phone numbers of five clients in your general geographical area – have a copy of their signed contracts for review.
- Is there a written opinion of “marketability” or potential success of your invention provided?
Do not trust your invention with a fly-by-night company. You should feel comfortable and confident with your patent attorney or agent.
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