The provisional patent Fallacy.. and why it’s all good news is my first published book on Amazon.
I’d love to hand out some discount coupons to many of you so you can have a look without the full retail expense of USD$9.99 but Amazon doesn't cater to that service unlike iTunes unfortunately.
What’s the book about?
Basically it addresses what I feel is the fallacy that you have to pay for what amounts to a full patent application just to get patent protection while you explore the invention and its opportunities. The whole idea of the provisional patent was for you to find out if you have a commercially viable idea BEFORE you have the full expense of a patent… but somehow this wonderful provision by the patent office has been completely nullified by the practise of submitting provisional patents that have taken as much work as full applications to produce… this is bunkum!
As a taster I have included the first chapter here for you to read if you think you may like to download the full book which casn be found here:
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Chapter 1: The problem
Why is one of Australia’s largest University’s, with hundreds of millions of dollars in annual investment in research, only applying for one or two dozen patents per year?...
…for the same reason that hundreds, if not thousands, of budding inventors, don’t patent their inventions.
Because of the fallacy that a provisional patent will cost as much as a full patent. At $8-$12k this is too much of a burden for most people…
The following definition is supplied for a US provisional patent at: http://www.uspto.gov/patents/resources/types/provapp.jsp
“Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date.
Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application.
There is no requirement that the written description and any drawings filed in a provisional application and a later-filed non-provisional application be identical, however, the later-filed non-provisional application is only entitled to the benefit of the common subject matter disclosed in the corresponding non-provisional application filed not later than 12 months after the provisional application filing date.
Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention.”
Note the following:
- Does this description of an invention need legally binding language? No.
- Does it require that claims be included? No.
- Does the provisional even need to be filed in the traditional patent format of background, description, operation and alternative embodiments? No.
- Do the drawings need to be identical? No.
No. No. No.
In essence the only limitation is your sense of risk. Risk that what you submit as a provisional does not adequately cover and relate to what you file in your full patent application. Proof of this will be supplied later in the book, but believe me, I was surprised at how simple a provisional can be that still captures the legal and practical essence of the invention you want to patent.
All you need is drawings and a description that can be reasonably linked to the full application you submit within 12 months of filing your provisional. In fact, although I have not tested this yet, my gut instinct is saying that most University white papers would easily qualify as the basis of a provisional patent application!
You may ask “even if the requirement for a provisional patent is technically much less demanding in terms of legal language and form, why wouldn’t you file something as close to a full application as possible? You have to do the work anyway… don’t you?...
… Well no. You don’t. That’s the whole point. To file a provisional takes $100. With slight modifications, most white papers could qualify as a provisional filing. So why engage lawyers and commit to thousands of dollars in legal expense when:
- You don’t know if someone will buy your invention
- You may not have had time or the resources to complete a thorough prior art search.
- You don’t even know if you have come up with the best approach to your invention. You may go another month and find a better even more valuable way to solve the problem that is the basis of your invention.
These are just three of a hundred reasons I can think of showing why a $100 provisional filing and your best effort at an invention description are by far the best first step in protecting your invention.
Fear that the provisional filing is not good enough.
Fear that you will get five years into your patent term, be in court with an infringer who has your case thrown out because your provisional didn’t stand up to scrutiny.
Are such fears groundless? Yes and no. But more yes than no.
I can’t be a hypocrite and say that there is no basis for caution. For my first five or six patents I had a lawyer check my provisional’s before filing, but pretty quickly I worked out that:
- The changes my lawyer wanted to make were frequently of a legal language nature;
- Or that they were of a form related nature; ie what goes where in what order, and;
- That the real decision as to the value of your provisional is with the patent examiner as it is their job to argue that your provisional doesn’t adequately cover the description in the full application.
Points one and two are more about a lawyer justifying their existence than actually protecting your legal rights, and point three is a win win for you.
Because if your provisional doesn’t cover what you submitted as a full application, then it can’t be used as prior art against you. It also means that your full application is a stand alone patent filing… you see. You win even if you lose!
On top of this, remember. The examiner is the one who makes the decision about the value of your provisional. If he or she gives it the green light, then you are in the clear.
If someone (ie an infringer) questions this decision in the future, it is an argument to be made between them and the patent office… not between you and them. And any judge and jury is going to think seriously about questioning an examiner about their decisions relating to a granted patent.
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See the following to buy the full book: Kindle viewers are available for Mac, PC, Kindle iPad and iPhone
 This refers to the fact that there is no need for a set of claims to be provided with a provisional patent.
 In the US a full patent application is called a non-provisional patent application.