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.
