Provisional Patent Part III – How Should You Use It?
There are some compelling reasons for using this form
of intellectual property - let's talk about some of the advantages first. Note
that the advantages are situation specific.The business world of small businesses and individual inventors often has different needs than large corporate clients. Clients in
that space sometimes come to us with a very clever and inventive concept but
are not yet sure it can be made into a reliable and affordable product. They
often also are not sure about the market. This situation leads to the first
characteristic of the provisional. It is lower in cost to file and once you
file the provisional patent application, you have a year before you must file
for a regular patent. This year gives you time to better assess both the market
and the product. If you conclude during that year that the product and/or the
market are just not there you can then decide that the cost and trouble of
filing a full non-provisional patent is not worth it. The savings are in the
thousands and sometimes tens of thousands of dollars (U.S.).
Before you get too excited about the cost savings -
note this cost savings is only if you never get a patent! If you do file a
regular patent within 12 months there is the cost of that comes into play. In
my experience the total cost once you do that is at least the same as if you
had filed a regular patent from the get-go. And it is often slightly higher.
second advantage - you stake a claim on the invention at a reasonable cost.
Once you file the provisional you are completely entitled to use a "Patent
Pending" notice on a product or product announcement. This can (sometimes)
be very useful if you need to go public with the invention during that year. As
an aside you will often hear people say that a Patent Pending is useless without a
patent. We disagree. Our experience has been that many companies are
reluctant to make a large investment in copying an invention once they hear
that there is a patent pending. On the other hand many small companies and
inventors need that entire year to evaluate their product and market and do not
announce that they have a patent pending - preferring to keep it a trade
secret.Related to staking a claim on the invention at a reasonable cost - you
also stake a claim on a "priority date".You establish a “date of invention.”
Because not all inventors can afford to create working prototypes and build and
test their inventions, and not all inventors are diligent about maintaining
witnessed notebooks to evidence the date of conception, filing a provisional
patent application is often the easiest or even only way to establish the date
of invention. In summary there are some obvious advantages to using this
approach for protecting your business - and we use them more than we did
Having said all of that, be aware that different businesses, large and small, have different strategies for filing patents. Some never use provisional patent applications. Some always begin with PCT's (more about that later). Patent filing strategies deserve an article or two which we will be doing soon.