What Does Patent Pending Mean? Part 1 of 3

From Colorado patent attorney Mark Trenner

You may find yourself out shopping at your local retailer and come across an item you find particularly interesting.  After further review, you see the words “Patent Pending” stamped right on the packaging.  What does this mean?  Why is this item marked in this fashion with the words patent pending?  To put it simply, the inventor or manufacturer of this product have filed for a patent with the United States Patents and Trade Office (USPTO), and are currently going through the approval process.  They are letting you know that they have applied for a patent, although it has not yet been issued, this is their idea for a product. One of the reasons to put this designation on a product is to detour other inventors or manufactures from infringing on your idea.  The patent approval process can be lengthy, taking approximately 18 months minimum on the quick end and usually longer to get granted. This allows the inventor time to market their idea before they are actually awarded the patent.  Patent pending is a tool used to help protect your ideas from others.

The words “patent pending” may bring up other questions: Does putting patent pending on my product idea have any value?  Is my product protected legally because I marked it patent pending?

In short, it can be valuable in the sense that it may keep other inventors from trying to patent this idea if they know a patent may be forthcoming soon.  It is commonly thought that just because something is marked patent pending that it won’t stop aggressive competitors from infringing upon an idea.

What Does Patent Pending Mean? Part 2 of 3

Inventors often ask their patent attorney whether filing a provisional patent application for their invention makes sense. This article answers the general questions about filing a provisional patent application, so that you can focus on the specifics of your case when you meet with your patent attorney. The US Patent Office defines Provisional Application for Patent here.

Filing A Provisional Patent Application Locks In A Filing Date

The United States was one of the last (if not the last) country to adopt the so-called “first-to-file” patent system. Under first-to-file, it does not matter when two inventors may conceive their invention. It only matters when the inventor files their patent application. And filing a provisional patent application counts as a filing with the US Patent Office for securing that filing date. Other benefits of a provisional patent application are discussed here.

Provisional Patent Applications Cost Less

A full utility patent application can cost thousands of dollars. Even the government filing fee is several hundred dollars. The government filing fee for a provisional patent application is right around $100. And the law firm fees to prepare and file a provisional patent application are often a fraction of the cost to prepare and file a full utility patent application.

You Can File More Than One Provisional Patent Application

While you can file more than one utility patent application if your invention changes (to cover any changes to your invention), that costs a lot more. Whereas if you file multiple provisional patent applications, those can all be combined into a single utility patent application. Be sure to check with your patent attorney for the correct filing deadlines if you employ this strategy.

Provisional Patent Applications Count As Priority Under The PCT

Provisional Patent Applications are recognized as priority patent applications, just as a utility patent application, by members of the PCT. That means you can file foreign patent applications based on your provisional patent application.

While some patent attorneys recommend filing a full utility patent application, and indeed some attorneys will not even file a provisional patent application, this is typically based on misperceptions or the attorneys desire to earn a higher fee. Talk to a patent attorney that has experience filing provisional patent applications, who can help guide you with a strategy appropriate for protecting rights in your invention.

What is a Provisional Patent Application? Part 3 of 3

Brought to you by the Denver Patent Law Firm: Trenner Law Firm, LLC

Although the provisional patent application process sounds simple, there are several “cautions” you can find listed on the United States Patent and Trademark Office website that you would need to pay attention to before filing. Here are some of the issues listed as per the USPTO site:

• Provisional applications for patent may not be filed for design inventions.
• Provisional applications are not examined on their merits.
• Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
• It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
• In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
• If there are multiple inventors, each inventor must be named in the application.
• All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
• The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
• A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
• There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
• Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
• No information disclosure statement may be filed in a provisional application.

 

What is a Provisional Patent Application? Part 2 of 3

From the Colorado Patent Attorney at the Trenner Law Firm

As previously mentioned, the provisional patent application is good for a period of 12 months from the date that it is filed, and cannot be extended under any circumstances.  Consequently, sometime during this 12 month period the applicant must file for a non-provisional patent application in relation to the provisional patent application, in order to benefit from the earlier file date.  This non-provisional patent application filing must contain or be amended with specific references to the previously filed provisional application.  In other words, have some similar qualities to your originally provisionally patented idea.

Provisional patent applications differ from the more common non-provisional patent applications in several ways: First and foremost a provisional patent application filing is a great deal less expensive than applying for a utility patent.  The filing fee for a provisional patent application is much less. Also compare the cost of a provisional application to the thousands of dollars you can spend with all that is involved to with a full patent application (research fees, issue fees, attorney fees, maintenance fees, etc…), the $125 seems like a drop in the bucket.  Provisional patent applications are also much easier than non-provisional application.  You can forgo many of the complicated processes involved with a non-traditional application.  For example; Patent Application Declaration (states you are the actual inventor and have disclosed all information you feel is relevant to the examination of the application), Amendments to the application if not initially approved by USPTO (which is very common), or Information Disclosure Statement (a discovery of all the relevant information known to you that is related to the originality of your invention).  Probably the most important difference is that a provisional patent application will not result in you having a patent at the end of the 12 month period, or any of the rights you would be granted with a full patent.  The provisional application provides you with some time to decide if you want to go through the process of obtaining a non-provisional patent application, and the privileges that come with that patent.  This decision must be made within a year from your provisional patent application date, and ultimately approved by the USPTO to receive the rights and privileges that come with a patent.

What is a Provisional Patent Application? Part 3 of 3

What is a Provisional Patent Application? Part 1 of 3

From the Denver patent attorney law firm: Trenner Law, LLC

Put simply, applying for a provisional patent application is a low cost method of filing for a patent which allows independent inventors the opportunity to protect their product ideas for 12 months with “patent pending” status.  This allows the individual time to help market their idea, generate capital, and keep others (sometime larger companies) from infringing upon their idea before applying for a traditional utility (non-provisional) patent.  One reason it is more simple and cost effective is because you can file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.  It can basically be written explanations and drawings that convey the purpose or use of your idea.

This can be a concise document consisting of several pages, using simple terms to explain your idea.  Another benefit of the provisional patent application process is that it helped level the playing field for American inventors.  US patent laws are now more in line with patent laws in other countries with the introduction of the Provisional Patent Application (PPA).

Just to give you a brief history on the creation of the Provisional Patent Application.  On June 8, 1995 the United States Patent and Trademark Office (USPTO) started offering this method of applying for a patent, which allowed US inventors a less expensive first patent filing. It was also designed to give US patent applicants equality with foreign applicants under the GATT Uruguay Round Agreements.  By doing so it provided a way to institute an early effective filing date, which you could then later file a non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description and marketing of the invention.

What is a Provisional Patent Application? Part 2 of 3

What type of patent application (design patent application, provisional patent application, or regular utility patent application) is the best?

A design and utility patent application each protect different aspects of an invention. A utility patent protects the function of an invention. A design patent protects the ornamental appearance of an invention. If an invention only has a unique function (no ornamental appearance), then the inventor can file a utility patent application (or provisional patent application). If an invention only has a unique ornamental appearance, then the inventor can file a design patent application.

But some inventions have both, and can be protected by a design patent and/or a utility patent. That is, there is a legal basis to file both types of patent applications. So which one should an inventor file? There are pros and cons to both. For example:

• A design patent is fairly limited, in that it only protects the specific design shown in the drawings (and perhaps minor variations). A design patent often issues faster and costs less.
• A utility patent is generally considered broader, because it protects various functions regardless of how it looks. But a utility patent application may take longer to issue as an enforceable patent, and costs more.

If budget is not a consideration, for maximum protection an inventor can file both a design patent application and a utility patent application. Often though, budget is a major consideration. With a limited budget, the inventor has to make the decision what is more important to protect (utility or design) and then pursue the appropriate route (provisional, utility, or design). This is called a “business decision.”

Whether to file a design patent application, a utility patent application, or both, is a business decision the inventor makes based on these and other factors. A patent attorney can answer questions about any of these options, and help the inventor make a decision that is appropriate on a case-by-case basis.

Inventorship is a legal determination based on the patent laws (discussed below) and a technical analysis of the claims in a patent application.

The threshold question in determining inventorship is who conceived of the invention. Unless a person contributes to the conception of the invention, he or she is not an inventor. The inventor is not required to reduce the invention to practice.

Conception is the formation in the inventor’s mind of a definite and permanent idea of the complete and operating invention as it is to be applied in practice. Conception requires a contemporaneous recognition and appreciation of the invention.

Conception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the extensive experimentation to make the invention operative.

Merely hoping that something will work does not establish conception, since there is not a definite understanding or a reasonable expectation that the invention will work.

An inventor may consider and adopt ideas, suggestions and materials derived from many sources. Examples include a suggestion from an employee, a hired consultant or a friend even if the adopted material proves to be the key that unlocks the problem so long as the inventor “maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting.

 

But simply suggesting an idea of a result to be accomplished, rather than the means of accomplishing it, does not make someone a co-inventor.

A coinventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. 116.

It is important to work with a qualified patent attorney in order to make a proper determination of inventorship. Failing to name all of the inventors on a patent application can have serious legal consequences.

You have an idea, an invention, and someone said you should get a patent for it. So you picked up the phone book and called a few patent attorneys. The big law firm quoted you eight to ten thousand dollars! After your initial shell shock, you called a medium size law firm who quoted you eight thousand dollars, plus or minus, depending on what exactly your invention was.

You probably figured that these law firms are busy doing work for large corporate clients and didn’t want to be bothered by an individual inventor. But then you called the small law firm and even the individual patent attorney and still heard quotes of over five thousand dollars just to prepare and file a patent application. And then they told you that draftsman and filing fees are extra.

Help! Where can I get a cheap patent application?

While some Internet sites may advertise “cheap” patent applications – Beware! There is no such thing as a cheap patent application. Most of the quotes you heard are right in line with what it costs to have a patent attorney or patent agent prepare and file a patent application for you.

First you should know that a patent application isn’t like an agreement, where you can take a form and populate it with information. Each patent application is unique. A patent application is a written description with accompanying drawings describing your invention in detail. This takes time to prepare. It takes even more time to prepare a good patent application.

But wait – I thought you were going to tell me where I can get a cheap patent application. While I wouldn’t endorse anyone who claims to be able to get you a cheap patent application, you should be able to find a patent attorney that will work within your budget to prepare a quality patent application for your invention.

Typically, these are not going to be the big law firms. They have too much overhead. Think of the rent they have to pay, the numerous salaries for their support staff, and not to mention the attorney salaries.

Even mid-size and small law firms are going to have too much overhead to offer affordable rates. They still have office space and a support staff, and the attorneys in mid-size and small law firms still want to take home an attorney salary.

Often, your best bet is going to be with solo practitioners. Solo patent attorneys work by themselves, often in less expensive office space (for example executive suites) and have a minimal staff (often a contract or pay-as-you-go staff). Solo patent attorneys often do their own typing (rather than having a secretary that takes dictation for them).

New technology often allows patent attorneys to work faster, more efficiently, and at lower costs. Solo patent attorneys often adopt technology faster than large law firms. Why? For one, large law firms have to replace 20 or more computers every time they want to upgrade. This can get expensive fast. The solo patent attorney only has to replace one or two computers. Large law firms often have extensive policies and procedures in place to ensure all staff works the same. It’s not their fault, it’s just the way any large entity is set up to operate. But changing a policy or procedure often involves management’s approval, which can take time. The solo patent attorney only has to make the decision to adopt a new technology, and then start doing it.

This combination of efficiency, adopting new technologies to lower costs, and lower expenses for office space and support staff (and other overhead), all allow the solo patent attorney to save money and pass those savings along to their clients.

So while you may not be able to get a cheap patent application, you may be able to save a substantial amount of money by working with a solo patent attorney.