You might ask whether you should file a provisional patent application or not.  There is no real yes or no answer to this question as every situation is unique.  You, as the inventor, should decide what is best for your situation but here are some guidelines to help you determine your answer.

You should keep in mind that it is not a “provisional patent” you are filing.  A provisional patent application is a placeholder that establishes a filing date for the invention but will not result in a patent.  The filing date is important in the patent application process because it establishes a starting point for the protection of your invention.  Once your provisional patent application is filed, you have up to a year to decide whether to proceed with obtaining a patent and filing the non-provisional patent.

This one-year period does allow you to take on many tasks that are important to the commercial process.  These include researching the market potential, finding investors, doing a prior art search and searching sources to see if your invention is already in existence or if someone else has previously disclosed it and evaluating if you should hire a patent attorney or agent, which is strongly recommended.

One of the major advantages of filing a provisional application is that you are allowed to use the term “patent pending” in conjunction with your invention (including the marketing and packaging of the invention) during this one-year period to let the public know that an application has been filed with the United States Patent Office and to warn potential infringers.

If, during this one-year period, you decide you do not wish to proceed with the patent any further, there is nothing you need to do.  The provisional patent application will automatically go abandoned you can no longer use the term “patent pending.”

If you do wish to seek the patent, then you must file a nonprovisional patent application within one year of the filing date of the provisional patent application.  The nonprovisional patent application must claim the benefit of the provisional patent application. 

Another big advantage is if the nonprovisional patent application does result in an issued patent, the patent term, which is the amount of time the patent is in force, is measured from the filing date of the nonprovisional patent application.  This means it may be extended by up to 12 months.

A few things you should keep in mind if you decide to file a provisional application are: (1) provisional patent applications are not examined, meaning you will have no indication as to the patentability of your invention; (2) designs cannot be filed as a provisional patent application; and (3) claims are not required in provisional application but it is recommended that the disclosure of the invention be as complete as possible.

Are you considering patenting your invention in a foreign country?  If so, the provisional patent application would be a good option.  The provisional patent applications can provide a foreign priority benefit for those seeking patent protection internationally.

Provisional patent applications are not released to the public unless the application number is referenced in an application or patent that is published later, such as through a priority claim.

If you are considering filing a provisional patent application it is important to get help from a patent attorney or agent so that they can help you through the entire process.

The first step in the patent application process should be the patent search as the patent search is used to help determine whether moving forward with the application is worth your time and expense.  The patent process can often be very expensive so you do not want to spend a lot of your time and money preparing and filing an application when it is simple to find prior art that might likely prevent a patent form issuing.  Patent searches can also give you a good idea if your patent may be patentable or not.  If it turns out that your patent is not patentable, you can move on to your next invention, which you probably have one.  Patent searches are also great learning tools because you are given the opportunity to discover which aspects of your invention most likely will contribute to patentability.  Therefore, you could focus more on those aspects in your patent application and focus less on the aspects which makes your invention less patentable.  This is why it is a good idea to pay for some kind of patent search.  It is important that you get an opinion or assessment provided by a patent attorney or patent agent.  You might only give a quick and cursory review of the patents that have been found and might miss a great opportunity to use the prior art that has been found to focus on what is unique and patentable about your invention. Some patent attorneys experience that the inventors will read the patent search report but do not read the patents.  It is important for you to focus on the patents that are the most relevant to your patent.  If you really take the time to read the key patents that are found in the search, you will be able to help decide about whether to move forward or not and then will be able to help contribute to the preparation of the patent application.  You will be able to help describe the invention as accurately and completely as possible.

           Also, determining how the prior art is similar and how it is different is important to be able to help decide whether to move forward with the patent application.  In order to make writing a patent application a much smoother and easier process it is important to include lots of detail.  The first application that is filed is very critical.  All aspects of your invention should be disclosed and nothing new should be added that won’t compromise the filing date. The initial disclosure can be specifically written to define and expand upon what are the key features and components to make it patentable.

           Doing a patent search and learning whatever you can makes sense so you don’t spend thousands of dollars on a patent application only to find out that a patent cannot be obtained.

           The United States Patent and Trademark Office will be issuing the tenth millionth utility patent this summer (2018). It is very exciting to those who work in patent law and it may even interest some inventors like you.  Below you will find a timeline of the important moments, notable inventors, changing patent designs and other interesting facts regarding patents.

           Following the passage of the 1790 Patent Act, the first Patent Board, which consisted of Secretary of State, Thomas Jefferson, Secretary of War, Henry Knox, and Attorney General, Edmund Randolph, began meetings at regular times to examine patents. The Patent Act of 1793 shifted patent examination to a simple but less-protective registration system. In 1794, Eli Whitney issued U.S. Patent No. X72 for a “Cotton Gin.”

           In 1800, the patent cover becomes a set form filled in by a calligrapher but is still signed by the president.  In 1802, Dr. William Thornton, who designed the U.S. Capitol, becomes the first superintendent of patents and he is later called the “commissioner of patents,” and he served for 26 years.  The U.S. Patent Office was established in Blodget’s Hotel in Washington, D.C. in 1810.  The Patent Act of 1836 completely rewrote U.S. patent law and in 1836 Charles M. Keller, was the first person named as “patent examiner.” On July 11, 1836, patents numbers were reset and U.S. patent no. 1 was granted to Senator John Ruggles.  John Ruggles also wrote the Patent Act of 1836.

           There was a fire on December 15, 1836 in the Patent Office and many patent documents and models were destroyed.  Today there are still efforts to recover the “X patents” that were lost in the fire.

           In 1840, Samuel Morse received U.S. Patent 1,647 for the telegraph and the related Morse code, Samuel co-invented with Alfred Vail.

           In 1842, the first design patent, “Des. 1”, which is now referred to as U.S. patent D1 was granted to industrialist, George Bruce for “new printing types.”

           In 1849, Abraham Lincoln received U.S. patent no. 6,469 for a “Manner of Buoying Vessels.” He remains the only U.S. president to hold a patent.

           In 1855, Clara Barton worked as a clerk at the Patent Office and paid equal wagers for her work.  After male coworkers complain, she was told to work from home and lost her job but she was later rehired.

           In 1867, patent covers were typeset in a script face and featured engraved illustrations which were often of the Patent Office in Washington, D.C.

           In 1872 the “real McCoy” was patented.  Elijah J. McCoy, whose parents were slaves, was issued U.S. patent no. 129,843 for an automatic lubricating device that enabled steam locomotives to run without stopping for lubricating.  The phrase “real McCoy” was requested by machine operators that were wary of cheap substitutes.  This phrase is still used today.

           In 1872, granted patents were published in the Patent Office’s Official Gazette every Tuesday that followed the issuance.

           In 1873, Louis Pasteur issued patent no. 135,245 for an “Improvement in Brewing Beer and Ale” that is the basis for modern beer brewing methods.

           In 1877, there was a second patent office fire which destroyed many patent models. After this fire, models are not mandatory when applying for a patent but was still frequently requested by the commissioner.  The 10,000^th U.S. Design patent was issued to Otto Heinigke for “Design for Pumps” in 1877.

           In 1879, the Parisian sculptor Auguste Bartholdi issued design patent no. 11,023 for the Statue of Liberty.

           In 1880, Thomas Edison issued patent no. 223,898 for the “Electric Lamp.” Thomas Edison is the inventor or co-inventor of over 1,000 US. patents.

           In 1887, the U.S. joined the Paris Convention, which is an international treaty that strengthens and harmonizes the protection of inventors across the world.

           I hope that this article about the history of the patent was interesting to you and that you learned something new.

           Do you have ideas for a new invention and looking for a company to help you with obtaining your patent or marketing your invention?  First of all, it is best to find an attorney to help you to obtain your patent but you will find information in this article to help you protect yourself against invention promotions that are improper or deceptive. 

           Here are some warning signs that it could be a scam:

1.  Television, radio, internet, newspaper and magazine ads that offer a free inventor’s kit or a free preliminary review of your invention. These ads get your attention and target independent inventors with offers of free information that lure you into contacting them and then they have all your information.

2.  Salespersons that tell you their firm needs to complete a market evaluation of your idea, which may cost lots of money.  The actual research may not be completed but yet the firm may give you a positive evaluation on your idea that is false so they can sell other services to you.

3.  It is a sign that it is a scam if the company refuses to respond to your questions in writing.  Most legitimate companies will provide their answers to you in writing.  Do not believe or accept any verbal promises or assurances.

4.  Companies who tell you to describe your idea in writing, mail it to yourself and then not open the envelope.

5.  The invention promoter or company only promises you a patent search but no opinion if your invention is patentable.  This should always be provided to you.

6.  You are guaranteed to get a patent or you will get your money back.  No one can guarantee you that your patent will be issued, not even a lawyer.

7.  They advise you to apply for a design patent instead.  A design patent covers the ornamental appearance of the invention and not the operation of the invention.  Therefore, this type of patent has limited applicability to most inventions.

8.  It is hard to reach salespeople or the company officials without leaving lots of message or maybe there is no real office location or company.

9.  The company tells you that your idea is guaranteed to be commercially successful.  Every client is probably told this at some point.

10.  The company refuses to provide you with client references.  Always get at least five names to contact for a reference.  Beware of contacts that have been hired to provide an excellent reference for the company.

11.  If the company provides copies of forms and agreements have an attorney review them before you sign them.

           The company is required to give you the following information: (a) the total number of inventions that have been evaluated in the past five years, including those inventions that received positive evaluations and those that received negative evaluations; (b) the total number of customers that have contracted with the Company in the past five years; (c) the total number of customers known by the promoter who have received a net financial profit as a direct result of the company’s promotional services; (d) the total number of customers known by the company to have received license agreements for their inventions as a direct result of the company’s promotional services; and (e) the names and addresses of all previous invention promotion companies with which the invention promoter have individually or collective been involved with in the previous ten years. 

           You could check the invention promoter or Promotion Company’s Firm Reputation before committing to anything.  You could visit the Federal Trade Commission’s website at www.ftc.gov/search/site to conduct a search to find out if the company has been investigated or fined by the FTC.  You just need to type in the word “invention” in the search box to conduct this search.  You could also check complaints listed on the United States Patent Office Published Complaints webpage which is: www.uspto.gov/patents-getting-started/using-legal-services/scam-prevention/published-complaints/published.

           If you feel you have been scammed you could register a complaint at www.uspto.gov/patents-getting-started/using-legal-services/scam-prevention. The United States Patent Office will not investigate complaints or participate in any legal proceeding against the invention promoters.  The United States Patent Office will accept complaints that are filed against invention promoters or promotion companies, forward those complaints to the invention promotion or company for response and make the complaints and responses available to the public.    

It is possible to obtain a patent for a process or method of doing something.  But the following steps must be done.

           You must apply for the patent before you begin to use the invention in a commercial manner.  Your own act of using the invention in a commercial way means that it has already been done before you have applied for your patent.  In other terms, your own actions could rob the invention of being unique.  If you have already started to use the processes in a commercial way, you should talk to your patent attorney because it may be too late to apply for a patent.  Patents provide the inventory with an exclusive right to exploit the invention described in the patent for 20 years.  The patent must fully describe the invention and be published for everyone to see.  Others are allowed to use the information in the patent to do a similar thing and/or to reach the same result.  If a person copies all of the essential elements which are set out in the patent, then the patent rights have been breached.  If some of the essential elements but not all of them, there is no infringement.  Patents apply only in the countries they are applied for in.  It is possible to file a patent application in Australia and then delay filing in other countries for up to 18 months.  Note that filing patents in foreign countries is expensive so you should be sure that you can make money out of the invention. 

           Because of the fact that filing a patent involves disclosing all of the elements of the invention, people sometimes decide not to apply for a patent, but they rather try to keep the invention a secret.  This would be a good decision if it is impossible to discover these secrets in the invention, for example, by reverse engineering or by watching how it is done. 

           If you think you are different to other inventions because of your processes, it might be good to consider other forms of intellectual property protection (e.g., trademark registration or copyright).

           Not every process and/or business method is patentable.  There are very strict limitations and classes of business methods that can be patented with the United States Patent Office.  The most common of these is financial data processing which covers computer processes that involve business practices, finance, price determination and/or management.  Other classifications of eligible business model processes include gaming, education and agriculture.  The USPTO differentiates between a business model and a business method.  To be patentable, the art, method, or process must be useful, unique and not obvious.  Disclosure has to be complete to the point that anyone who has general knowledge of the industry can understand how it works.  There are three exceptions.  Laws of nature, abstract ideas or physical phenomena cannot  be patented. 

           The best way to make sure that you get the results you wish to achieve, you should always talk to a patent attorney.

You might wonder why an inventor would want to obtain a patent and why a patent is useful other than just for protection and from someone else stealing it.

Patents provide incentives to and protection for the inventors by offering recognition for creativity and the possibility of material reward for their inventions. The historical purpose of the patent system was really to encourage the development of new inventions and to encourage new inventions to be disclosed but inventors are often hesitant to reveal their inventions for fear that someone might steal it.  This would lead to keeping inventions secret, which slows down innovation..

A patent system helps to correct such under-provision of innovative activities by providing inventors with limited exclusive rights, thereby giving them the possibility to receive appropriate returns or rewards for their innovative activities. Through these exclusive rights, inventors are able to prevent others from commercially using their patented inventions, which helps to reduce competition.  Public disclosure of the technical knowledge in the patent, and the exclusive right granted by the patent provide incentives for competitors to search for alternative solutions and to make other inventions around the first invention.

A patent would give you or your business a positive image.  Many people would view patent portfolios as essential and a demonstration of a high level of expertise. This would prove useful for raising funds, finding business partners and raising your company’s market value.

Another important reason to file for a patent is that it is a much stronger right than copyright. Copyright only protects your own particular expression of an idea and does not protect against implementation of that idea. A patent protects the idea itself, if the  idea represents an invention. 

Also, patents can be used as bargaining chips. If one company has a patent on a particular invention which another company wants to practice, the other company will have to pay. Also, many capitalists will refuse to invest in a company that does not have at least a patent application on its product(s) or service(s).

If there is a significant market demand, a patent could allow an inventor to sell a product at a higher price but does not help increase the market demand for the product.  If there is a large enough demand for a patented invention, the patent can be used to prevent others from selling their version of the patented product. 

The advice of an attorney would be best to help you decide if a patent would be useful for your invention.

You probably wonder if there are requirements to obtain a patent.  The answer to this question is yes.  There are three basic requirements to get a patent.  These requirements will be discussed below.

The first requirement that needs to be met is that the invention needs to be new and original.  If certain public disclosures have been made, the invention is not patentable. An invention will not normally be patentable if: the invention was known to the public before the applicant filed for the patent; the invention was described in a printed publication before the applicant filed for the patent; or the invention was described in a published patent application or issued patent filed before the applicant filed for the patent. There is a one year grace period for the first public disclosure or offer for sale of an invention by an inventor during which a patent application must be filed. Although, an inventor who does not file for patent protection on a new invention within this one year grace period will lose all right to obtain patent protection on the invention.  It is preferable to file a patent application before any public disclosure of the invention. 

The second requirement is the idea must have some “useful” function or purpose.  This requirement is easily met in the context of computer and electronic technologies. When attempting to patent a pharmaceutical or chemical compound, this requirement is more important. 

The last requirement is that the idea should not be obvious. The invention is compared to the prior art and a determination is made whether the differences in the new invention would have been obvious to a person having ordinary skill in the same type of technology used in the invention. It requires that the invention be obvious at a time before the application was filed. An examiner in the patent office will usually review previous patent documents to find those patents and published patent applications that are closest to the invention for which patent protection is sought to make this determination.

An attorney can help you determine if your idea meets these three requirements and analyze it further. 

Patent Attorney: Colorado’s Mark Trenner Answers Questions…

When can I tell others about my invention?

Inventors often want to know when they can tell others about their invention. Patent attorney Mark Trenner always recommends his clients do not disclose anything about their invention to anyone before applying for a patent. And applying for a patent means actually filing at least a provisional patent application or full utility patent application with the US Patent Office.
Note that provisional patent applications cannot be used to protect a design. You must file a design patent application.
In addition, disclosing, using your invention in public, publishing anything about your invention, and even selling or offering to sell your invention may cause you to lose rights to your invention.
While there are some exceptions for those inventors who inadvertently disclosed their invention before realizing that they should have filed a patent application first, important legal rights can be lost. If a panicked client comes into Trenner Law Firm worried that they have lost rights to their invention by making a public disclosure, we may still be able to file a patent application if it has been less than one year since the public disclosure, depending on the circumstances.
But it is not a good idea to rely on a grace period, especially under the new patent law effective March 17, 2013.
In addition, many foreign patent laws require that a patent application be filed before any public disclosure. So if you are considering filing for patent protection outside of the US, you often must file a patent application before disclosing your invention.
Moreover, the US patent law changes in 2013 from a “first to invent” to a “first to file” patent system. This makes it even more critical that you do not disclose your invention and that you file a patent application as soon as possible – or you can risk losing important legal rights in your invention.