Category: 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.

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.

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.

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.

 

Your patent attorney just sent you an Office Action he or she received from the Patent Office for your patent application. Here are some of the types of objections and rejections you may be facing.

Objections to the Specification. These are typically minor corrections that the Examiner is requiring be made to the written description in your patent application. Often, the Examiner will state what specifically needs to be changed in order to overcome the objections. Examples include amending the title of your invention to be more descriptive, amending the abstract of your invention to be 150 words or less, and correcting minor typographical errors.

Objections to the Claims. Again, these are typically minor corrections that the Examiner is requiring be made to the claims in your patent application. Often, the Examiner will state what specifically needs to be changed in order to overcome the objection. Examples include providing proper antecedent basis for a claim recitation, correcting claim numbering and claim dependency, as well as correcting minor typographical errors.

Claim Rejections. There are five common claim rejections. Each of these rejections are based on a section of the US Patent Law: Section 101, Section 112 (first paragraph), Section 112 (second paragraph), Section 102, and Section 103 rejections. The first three types of rejections (Section 101 and 112) are typically formalities that can be easily dealt with by amendment. The Section 102 and 103 rejections are often referred to as “substantive” rejections and often require some creativity to amend the claims and argue the basis for patentability of your invention.

Your patent attorney can give you more guidance, and prepare the necessary Response with your input. You should not rely on anything here as specific advice for preparing a Response to an Office Action.