What is a Provisional Patent Application?

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.

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.

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 type of patent application is best?

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.

How many design patent applications is appropriate?

A design patent application is limited to a single design. An inventor can file separate design patent applications for each unique design. But it is easy to see how this can quickly get out of control. To reduce costs, one approach is to file design patent applications for the actual design being marketed.

While minor variations may be considered additional embodiments of the same design, the Patent Office Examiners are typically fairly strict and will make the applicant select a single design for examination. Thus, while a single design patent application may include more than one embodiment of the same design, the Examiner may require the applicant to re-file these as separate design patent applications (and pay the separate fees for each).

But filing multiple design patent applications for minor variations of the same invention can also get the applicant into trouble. For example, this may be used as an admission by the applicant that the inventor considers such a minor changes to be distinct. A potential infringer could use this against the applicant later, countering any claim for infringement that any minor differences in their design also are distinct (and thus they are not infringing the design patent).

These are just some of reasons why it may be a good approach (when possible) to file both a design patent application for a specific design being marketed (regardless of how it functions), and a utility patent application for the utility of the invention (regardless of how it looks). Of course, how many and what type of patent applications to file is a business decision that should be based on input from a patent attorney who understands your invention and your goals for taking the product to market.

Can I change my patent application after it is filed?

Clients often ask me if they can change their patent application after it has been filed with the Patent Office? Yes, but there are certain restrictions to be aware of.

The most common mechanism for changing a patent application is by amendment. However, there may be times when it is necessary, or desirable, to file a divisional application, a continuation application, or a continuation-in-part application. What is the difference between a divisional patent application, a continuation patent application, and a continuation-in-part patent application? There are subtle, but important differences.

A divisional patent application is typically filed when the Examiner issues a restriction requirement (saying that you have tried to claim more than one invention), and makes you withdraw the claims. You can file a divisional patent application including the withdrawn claims. A continuation patent application is typically filed when you want to file another application with claims which were described and enabled by the specification (and/or drawings), but not claimed.

Because no new matter is added in either the divisional or the continuation, these patent applications will have the same filing date as the parent application, provided the parent application (or a child application) is still pending. Therefore, it is important to discuss the possibility of filing divisional or continuation applications before your patent application issues or goes abandoned.

A continuation-in-part (CIP) may be filed to add new material to the specification, drawings, and/or claims. CIP applications are typically considered when the inventor makes a change or addition to his or her invention. Anything which was previously described in the parent application specification and drawings, receives the filing date of the parent application. But any new material receives the filing date of the CIP application. Therefore, the bar dates apply to any new material. That is, if the new material was publicly disclosed or publicly used, sold/offered for sale, or published, the CIP application must be filed within one year of such an event or the new material is considered to be in the public domain. Just as with the divisional and continuation patent applications, a CIP application also must be filed before issuance or abandonment of the parent application (or a child in the chain of applications if there is more than one patent application).

Changes with the new patent legislation which was enacted in 2011 may also affect your filing strategy. Therefore, it is important to discuss any changes or new aspects of your invention with your patent attorney as soon as possible to avoid losing important legal rights to your invention.

Who should be named as an inventor on my patent application?

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.

Where can I get a cheap patent application?

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.

Top five (5) reasons not to file a provisional patent application

In an earlier article titled “Top 5 Reasons To File A Provisional Patent Application” we explained why you might consider filing a provisional patent application. You might also be interested in reading “Why Won’t My Patent Attorney File A Provisional Patent Application?

Now we look at the top five (5) reasons NOT to file a provisional patent application. But before we can answer that question, it is important to know what is a provisional patent application.

A provisional patent application is a patent application that describes your invention in words and optionally with drawings or pictures, and when filed with the United States Patent Office, receives a serial number and a filing date. On the same day that you file your provisional patent application with the United States Patent Office, you can mark your invention (brochures describing your invention, etc.) with the words “Patent Pending” (or “Pat. Pend.” for short). This is the same as filing a regular patent application. The difference is, a provisional patent application is never examined by the U.S. Patent Office and automatically goes abandoned after one year from the filing date.

You might be asking, “If a provisional patent application goes abandoned after only one year, why would I file one?” Well there are some circumstances when you shouldn’t even consider filing a provisional patent application. Here are the top five (5) reasons NOT to file a provisional patent application (or any patent application).

1. There is no invention (yet) or you are not the inventor. You can file a patent application for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement. You cannot file a patent application for abstract ideas or laws of nature. Even if you don’t have an invention, you may want to consider other ways to protect your idea, perhaps with copyrights, trademarks, and as a trade secret. A patent attorney can help you determine whether you have an invention, and if not, what other types of protection might still be available to you.

Even if you have an invention, you still need to enable your invention. While there is no requirement that you have actually built and tested your invention before you apply for a patent application, you must be  fully enable someone having ordinary skill in the art to practice your invention. This means, for example, if your invention is for software, you do not need the actual computer code before you apply for a patent. But you do need to understand your invention sufficiently that if you described it to a computer programmer, the computer programmer would be able to write the computer code without any undue experimentation.

Of course, if you are not the inventor, then you cannot apply for a patent.

2. Your invention is not novel or your invention is obvious. If someone else already has your invention, or is something so similar that your invention would be considered an obvious variation, then you cannot apply for a patent for your invention.

How do you know if someone already has your invention? Go to the stores that would sell your invention. For example, if your invention is for a new camping product, check stores that sell camping supplies. Check trade publications in the relevant industry. Talk to people who are familiar with the industry (without telling them what your invention is). Do an Internet search. Or better yet, hire a patent attorney to conduct a prior art search.

How will the United States Patent Office know if someone already has your invention? While you’re not required to do any sort of prior art search on your own before filing a patent application, you are required to cite any prior art you are aware of with the United States Patent Office from the time you file a patent application until the patent application issues as a patent. In addition, the United States Patent Office will conduct their own prior art search as part of the examination process, regardless of whether you have also done your own prior art search.

3. Publications, Public Disclosure, and Public Use of your invention. You cannot apply for a patent application if you published your invention more than one year ago. Publications can include anything from describing your invention in a magazine article, to posting pictures of your invention on the Internet.

You cannot apply for a patent application if you publicly disclosed your invention, or if you used your invention in public, for more than one year.

Most foreign countries have an even more strict requirement, that your invention not be publicly disclosed at all before filing a patent application. You should contact a patent attorney immediately if you are considering foreign patent protection for your invention.

4. Sale or offer for sale of your invention. You cannot apply for a patent application if you offered to sell or actually sold your invention more than one year ago.

5. Will you have the money to file a regular patent application within the next year? Your budget (or lack of a budget) is probably the number one reason to opt for filing a provisional patent application. If you can’t afford to file a regular patent application just yet, but you don’t want to lose rights to your invention, you might consider filing a less expensive provisional patent application. Then when you have money from sales of your invention, or investors lined up, you can better afford to file a regular patent application.

While you might delay some of the costs by first filing a provisional patent application, you need to be aware of the downstream costs. Your provisional patent application will automatically go abandoned one year from the filing date. If you want to maintain your rights, you will need to file a regular patent application and claim priority to your provisional patent application before the one year expiration. Ask yourself: “Will you be able to afford filing a regular patent application within that one year?”

So, should you file a provisional patent application? Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss the pros and cons with your patent attorney so that you can make an informed decision.

Top five (5) reasons to file a provisional patent application

In an earlier article titled “Why Won’t My Patent Attorney File A Provisional Patent Application For Me?” we debunked the myth that you shouldn’t file a provisional patent application. Now we look at the top five (5) reasons why you should file a provisional patent application. But before we can answer that question, it is important to know what is a provisional patent application.

A provisional patent application is a patent application that describes your invention in words and optionally with drawings or pictures, and when filed with the United States Patent Office, receives a serial number and a filing date. On the same day that you file your provisional patent application with the United States Patent Office, you can mark your invention (brochures describing your invention, etc.) with the words “Patent Pending” (or “Pat. Pend.” for short). This is the same as filing a regular patent application. The difference is, a provisional patent application is never examined by the U.S. Patent Office and automatically goes abandoned after one year from the filing date.

You might be asking, “If a provisional patent application goes abandoned after only one year, why would I file one?” Here are the top five (5) reasons you should file a provisional patent application.

1. Can you afford to file a regular patent application? Your budget (or lack of a budget) is probably the number one reason to opt for filing a provisional patent application. In general, provisional patent applications cost significantly less than filing a regular patent application. There are no formal requirements for a provisional patent application, like there are for a regular patent application. So in general, it takes a patent attorney more time to prepare a regular patent application than it takes to prepare a basic provisional patent application. It’s the old adage that “Time Is Money.”

I’ve seen patent attorneys charge $6,000 to $8,000 or more just to prepare and file a regular patent application. Often the draftsman charges are in addition to the $6,000 to $8,000. Not to mention, the United States Patent Office charges nearly five (5) times as much for the filing fee to file a regular patent application. At the time of writing this article, the filing fee for a provisional patent application is a little over $100, while the filing fee for a regular patent application is a little under $500 (for individuals and small entities – double for large entities).

If you can’t afford to file a regular patent application just yet, but you don’t want to lose rights to your invention, consider filing a less expensive provisional patent application. Then when you have money from sales of your invention, or investors lined up, you can better afford to file a regular patent application.

2. Are you still developing your invention? There are many good reasons to file a patent application as quickly as possible, even before you have fully developed your invention. The most important reason for filing a patent application as soon as possible is to get a filing date with the United States Patent Office. Once you have a filing date, nothing developed after your filing date can be cited as prior art against your invention. In addition, you can publish your invention (for example, in a press release), publicly disclose and publicly use your invention, and offer your invention for sale and actually start selling your invention without losing the rights to your invention.

Even if you are still developing your invention, you can file a provisional patent application. Then if you come up with more developments during the one year before the provisional patent application expires, you can add those new features to the regular patent application. This way, nothing gets left out.

3. Are you ready to take your invention to the next level? Even if you think your invention is fully developed, it’s always good to get a second opinion (and a third opinion, and a fourth opinion . . . ). Showing your invention to friends and family, having a prototype built, and testing your invention may all lead to improvements, fixing things that don’t work, or coming up with different ways of implementing your invention.

But getting those second opinions means showing your invention to others, which can be risky business if you haven’t already filed at least a provisional patent application. In addition to reducing the risk that someone sees your invention and claims it as their own, a provisional patent application can also be important evidence that your invention belongs to you.

4. Are you ready to test the market for your invention? Maybe you think your invention is the greatest idea since the light bulb. You’ve told your spouse and a few close friends, and they all agree. But what really counts is how your invention is what the customers think. There are many patents issued every year, and many more patent applications filed, that never make it in the marketplace. Wouldn’t it be good to get some customer feedback to find out whether your invention is really all you think it is? Wouldn’t it be good to know whether your invention will be an instant success, whether it needs some more work, or whether it’s a total flop before you invest too much time, effort, and money in this idea?

Before you start test-marketing your invention, you’ll want to file a patent application to preserve your rights to the invention. But why spend a lot of money on a regular patent application when you have no idea how your invention will be received in the marketplace. Instead, consider filing an inexpensive provisional patent application. Then you will have nearly a year to test your invention in the marketplace, discuss it with others, and consider whether you really want to move forward with your invention. If it’s a great success, you can file a regular patent application by the end of the year. If it’s a flop, well then its back to the drawing board . . . but at least you didn’t spend a lot of money filing a regular patent application.

5. Is someone else interested in your invention? Maybe you have a close friend who works in the industry. You’ve told your friend about your invention in broad terms, and he or she is excited to learn more. Your friend wants to tell the management at their company about your invention. This might be the next big thing!

Before you tell your friend any more about your invention, you’ll want to file a patent application to preserve your rights to the invention and make sure there is no dispute over who owns the invention. Having a patent application on file with the United States Patent Office also shows others you’re serious about your invention. But why spend a lot of money on a regular patent application when you’re not sure if the company your friend wants to show your invention to, is really going to be as interested in your invention and your friend seems to think? Instead, consider filing an inexpensive provisional patent application. Then you can show your invention to others, and if there is interest, you can file a regular patent application by the end of the year.

So, should you file a provisional patent application? Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss the pros and cons with your patent attorney so that you can make an informed decision.

Why won't my patent attorney file a provisional patent application?

Have you ever asked for someone’s opinion, only to find that everyone seems to have a different way of doing the same thing? The conversation often goes something like this. I would do [it] this way. Replace [it] with whatever you are asking about. Well I would do [it] this other way. And this other way just so happens to be completely the opposite way of doing the same thing! Or even, I would never do it that way. Okay, now you’re completely confused.

Different opinions usually have their origin in different perspectives, or different ways of looking at the same problem. Everybody views things from a different perspective, and so different people have different opinions and different ways of doing the same things. This is what makes the world great, and gives us variety and diversity in the marketplace. How much fun would it be if we went to the car lot and all they had were white sedans?

But as I said, this can also lead to confusion. Especially when someone you trust (or should be able to trust) gives a different opinion from someone that else you trust. In the end, you have to make up your own mind. And the person you can trust the most is usually the one who explains to you the different options that are available, including the pros and cons of each option, and then lets you make the decision that is best suited for you.

You might be asking, “What does all of this have to do with filing a provisional patent application?” . . . and “Why won’t my patent attorney file a provisional patent application for me?”

I’ve found that there are patent attorneys who advise clients never to file a provisional patent application. I’ve even heard of patent attorneys refusing to work with an inventor if the inventor wants to file a provisional patent application. I think this is outright wrong. The role of a patent attorney is to explain the options to you, guide you through the pros and cons, and then let you make the decision that best fits your budget, your timeline, and your other personal and business goals.

While I’m not going to discuss all the pros and cons of a provisional patent application here, I can answer your question “Why won’t my patent attorney file a provisional patent application for me?”

You may also be interested in “What is a provisional patent application?

Why then, you might ask, should I file a provisional patent application, if it is simply going to go abandoned after one year? There are a number of reasons you may want to file a provisional patent application instead of a regular patent application. And your patent attorney should discuss these with you so that you are comfortable making an informed decision for proceeding to protect your invention.

Most important, you should know that even if you file a provisional patent application, you can still file a regular patent application. You can file a regular patent application anytime within one-year after you file the provisional patent application, and your regular patent application can claim priority to the provisional patent application. That means, the regular patent application you file will have the same filing date as the provisional patent application for the subject matter you disclosed in the provisional patent application.

This is a crucial point, and perhaps the biggest reason some patent attorneys don’t recommend (or go further yet by refusing to file) provisional patent applications. So let’s take an example. Say you  invented the car. You filed a provisional patent application on March 15, 2010 describing that the car has four wheels, a passenger compartment, and a steering wheel. But you don’t describe the car as having an engine. Later that same year, perhaps on August 1, 2010 you filed a regular patent application claiming priority to the provisional patent application you filed back on March 15, 2010. In your regular patent application you describe the car as having four wheels, a passenger compartment, a steering wheel, and oh yeah, now you also describe the car as having an engine. So your regular patent application (the patent application that will actually be examined by the U.S. Patent Office and perhaps issue as a patent) has a filing date of March 15, 2010 (the date of filing your provisional patent application) – but only for the car having four wheels, a passenger compartment, and a steering wheel. For everything else that you added that was not originally described in your provisional patent application, the filing date of the regular patent application applies. So in this example, the car’s engine gets the later filing date of August 1, 2010.

Why is this important? If you started publishing information about your invention (the car), sold or offered your car for sale, or publicly used your car more than one year before the filing date, then you are no longer able to apply for a patent application. So in this example, if you had offered your car for sale on March 20, 2009 before you filed your provisional patent application on March 15 2010, that’s okay because you filed your provisional patent application within one year of the date you first offered your car for sale. For everything except the engine that is. The car’s engine gets the later filing date of August 1, 2010, which is more than one year from March 20, 2009 (the date you first offered your car for sale). Therefore, you are not entitled to patent protection for your car’s engine.

How do you avoid a situation like this? Simple. Be as complete and thorough as you can when you are describing your invention in the provisional patent application. Don’t leave anything out. Make sure your patent attorney understands each and every feature of your invention. And don’t be afraid to speak up and tell your patent attorney that something is missing when you review the draft of the provisional patent application your patent attorney has prepared, before it gets filed. Your patent attorney’s feelings won’t be hurt if you speak up and tell him or her that something is missing. You will be hurt, however, if you don’t speak up in time and an important feature of your invention is left out of the provisional patent application.

So, should you file a provisional patent application? Ultimately, you will need to make the decision, weighing a number of factors, including budget, timeline for taking your invention to market, and various other business considerations and goals you have for your invention. And in some instances, it may make more sense to file a provisional patent application initially, instead of a regular patent application. Be sure to discuss all the pros and cons with your patent attorney so that YOU can make an informed decision. And if your patent attorney refuses to discuss provisional patent applications with you as an option, you might want to find another patent attorney.

HELP! I just received an Office Action

An Office Action . . . What’s this?

You applied for your patent application 1-2 years ago. You thought you were done, right? Wrong. Now it’s starting to come back to you. When you filed your patent application, you remember your patent attorney mentioning something about the claims having to be examined by the Examiner at the US Patent Office, and that it would take 1-2 years, maybe even longer. It seemed so far in the future that maybe you didn’t really think about what this meant.

Now you just received an Office Action from your patent attorney, and all of the claims are rejected! But when you read the rejections, none of it makes any sense. Certainly your invention is different than these other references the Examiner is citing.

The Examiner just doesn’t understand your invention, right? Maybe. More likely, the Examiner has some basis for the rejections. But don’t give up. You can file a Response to the Office Action. A Response to an Office Action typically includes either or both an amendment and remarks.

Amendments. In an amendment, you agree to make changes to the claims. You might also make changes to the written description of your invention (for example, to correct typographical errors). Sometimes you also have to make changes to the drawings (for example, to show an aspect of your invention more clearly).

Remarks. In a response, you present arguments or reasoning explaining why your invention should be patentable and why the Examiner’s rejections are incorrect. If the Examiner agrees, the next action you receive from the US Patent Office may be a Notice of Allowance – meaning your patent application will issue as a patent if you pay the fees and tend to any formalities the Examiner requires.

But how do you file a Response to an Office Action? The mechanics of preparing and filing a Response are best left to a patent attorney. There are specific requirements, including important deadlines, that must be met in order to file a proper Response with the US Patent Office. Failing to file a proper response in a timely manner may result in a loss of legal rights to your invention.

The cost for filing an amendment and/or response will depend on a number of factors. Examples include the patent attorney’s billing rate, the number and extent of the rejections, and the number of references cited by the Examiner that will need to be reviewed by the patent attorney before preparing an amendment and/or response.

Most likely your patent attorney has included a cost estimate for you when he or she sent you a copy of the Office Action. Typical charges for filing a Response range anywhere from a couple hundred dollars on the low end, to several thousand dollars.