Mr. Matt Buchannan is a patent attorney and friend of mine who is closely tracking the patent reform discussions. His "Promote the Progress" blog is a place that patent attorneys go to see whats going on at present. It is at http://www.promotetheprogress.com/. Anyone interested in these reform moves should sign up for his blog.
There is a move afoot to make some reforms to the patent system in the U.S. One goal is to remove or lessen differences between the U.S. patent system and the systems of Europe and Japan. This effort is called "harmonization", not "kowtowing." Another driver is to make the patent office function more efficiently. As has been proposed in previous reforms, one measure to improve the U.S. Patent Office is to keep the money paid by inventors as fees within the patent system, to hire more examiners, and to reduce the pendency of patents. The Patent Office has always been a cash cow, and inventors fee money has always been "diverted" (robbed) by Congress from benefiting inventors to pay for other programs. In the meantime, a patent application is not read for 12 months to 48 months after it is filed, due to the shortage of Examiners.
The issues that are on the table for discussion of reform include:
1. adoption of a first to file system, like Europe and Japan, instead of the first to invent system we have now. In a first to file system, whoever files first gets the patent, even if someone else invented it first. A First to File system is disadvantageous to small inventors, who may not be super fast to file for a patent.
2. post grant administrative review of new patents
3. publication of all application within 18 months (not issuance, just publication).
4. limits on continuation practice
5. modification or elimination of penalty for willful infringement (wanted by big companies). This would take away much of the risk of infringement lawsuits for the big boys, and make it even tougher for the small guys to prevent infringement of a patent by the big boys.
6. modification of elimination of standard for inequitable conduct of attorney
7. elimination of the best mode requirement now present in the U.S. system but not in Europe or Japan.
8. harmonization of US, European, and Japanese examination systems
9. reinvigoration of the non-obviousness standard
10. modification of the standard for finding a patent invalid to a preponderance of the evidence
11. modification of rules for injunctions, making it harder to get an injunction, which the big boys like.
12. keeping funds paid by inventors for use by the patent office instead of being siphoned off to pay for other government programs. The money to be used to make pendency of patents shorter, so they issue sooner.
More later, as discussions continue.
I sometimes have an inventor ask what a patent is worth. This is often in the context of possible licensing of the patent to a licensee. Just like real estate, a patent is worth whatever someone will pay for it. However, unlike real estate, appraisals and determining market value are very difficult with a patent. With a patent, there are only two parties who are “true believers” about the patent. The inventor is a true believer, because he has spent a lot of time contemplating the possibilities. The other true believer is the marketing company, but their belief is a cynical one, presented only to lure the inventor into costy sucker traps.
However, when in investor considers a patent, he sees it as a venture filled with uncertainties. The uncertainties include: Is the patent valid? Can it be proven invalid? Can it be designed around? Will the device sell? What will it cost to make the device? What will people pay for the device? What is the best way to make the device? What sources are the best for parts and materials for the device? What kind of people will buy the device? How many people will buy the device? The more uncertainties there are, the more risk there is for an investor, and the less they are likely to pay for an invention, or to license the patent.
An inventor can increase the value of his patent by removing as many of those uncertainties as possible. One way to do this is to have a current patent search done, to get some assurance that it is different than the prior art. Another way to remove some uncertainty is by test marketing the invention, or putting in on retail shelves in some way to present to consumers. After test marketing, he can then tell a potential investor how the device is best made, what it costs to make it, what people will pay for it, how many of them sell, and other information. The more of these uncertainties are determined, the more the patent is worth, and also the less the inventor needs the investor.
This is a follow up to the earlier post on an inventor's statistical chance of success. Those numbers should tell one that of 50 patent applications that are filed, 45 result in issued patents. Those are good odds. Of those 45, 5 end up being quite profitable. That is 5 out of the 50 that started the process to get a patent, or 10%. Those are not bad odds, if the return is worth the risk.
The inventor has a good deal of control over his chances of success, by eliminating as many uncertainties about the project as possible, and developing good intelligence on which projects to pursue. So if the inventor only pursues projects that have a good potential market, can be made cheaply enough to keep the sale price within what buyers will pay, and that people actually want, they have improved their odds quite a bit. If they have figured out how to market it, by test marketing, showing at trade shows, getting some good marketing materials, having a nice looking design, they have further increased their odds.
Sometimes an inventor asks about their chance of success. If they are using an invention promotion company, I would say their chance of success would be better if they bought lottery tickets. However, we have noticed some statistics that are useful in this evaluation.
Our usual practice is to do a patent search, then file a patent application. Then in the years that follow, we help the inventor get trademarks, negotiate license agreements, and possibly file followup patent applications. Over a period of time, we have observed some general statistics, which of course do not take into account if the product is a good idea, if the invention is at the right time, if it can be built for a price to make its sale price attractive, if the inventor is competent to get it to market, design it, hire the right people at the right time, etc. Just looking at numbers, here are the numbers:
100. Of every 100 inventions we do patent searches on, about 60 percent of them turn out to have patentable subject matter.
50. Of those 60 searches, about 50 of them go ahead with a patent application.
45. Of those 50 applications, about 45 of them result in issued patents.
25. Of those 45 issued patents, about 25 inventors do nothing with the invention, or are not successful. They may run out of energy, inspiration, time, dedication, or they may make dumb mistakes about marketing, packaging, designing, unable to find a licensee, or run out of money.
20. Out of the 45 issued patents, about 20 inventors do some kind of test marketing.
5. Of the 20 that do test marketing, about 5 will fail. The item may not sell for the price they have to get in order to make a profit, or people may not be interested in the product.
15. Of the 20 that do test marketing, about 15 are at least marginally successful.
10. Of the 15 that experience marginal success, about 10 will quit for lack of interest, resources, dedication, inspiration, changes in circumstance. Some of these could have been saved if the inventors could learn from purchasers what they really want in this kind of product, and if the inventor can change his product. Most inventors don't realize how long it takes to make a product a success, and don't have the stamina to follow it through.
3 and 2. Of the 5 that are left of the 20 who did test marketing, about 3 will grow into successful single product businesses, and 2 will license their product to a larger company.
Steve Nipper, a partner in the prestigious intellectual property firm of Dykas, Shaver, and Nipper, LLP, has further information about invention promotion companies, at The Invent Blog.
Almost every day I get a call from a client who has been contacted by an invention promotion company. I tell them that its probably a scam. "Oh no, these guys sound legit. They'll pay half of my airplane ticket to talk to them. They think my invention is great and will sell a lot." Sure they'll pay half your airplane ticket, because they are going to take you for many thousands of dollars. Usually, I can check out the names of the company at the U.S. Patent Inventor Fraud Complaint site, and find a few complaints (scroll down to find the complaints).
Then I tell my client to ask them the 10 questions that they are required by law to answer, and get their answer in writing. These questions are found at the U.S. Patent Office Scam Prevention site. The 10 questions are:
1. Total number of inventions evaluated for commercial potential in the past five years by the Company and how many of those evaluations were positive and accepted by the Company and how many were negative and rejected by the Company.
[Legitimate firms have fairly low acceptance rates. usually under 5%].
2. Total number of customers, known by the Company, who have received a net financial profit as a direct result of the Company's promotion services and what is the Company's success rate over the past five years [that is, the number of clients who have made more money from their invention than they have paid to the Company].
3. Names and addresses of all previous invention promotion companies with which the Company or its officers have collectively or individually been affiliated in the previous 10 years and what other names has the Company used in this or other states.
4. Total number of customers, known by the Company, to have received license agreements for their inventions as a direct result of the Company's services. [lf the success rate is too low, say less than 2-5%, then think about going elsewhere].
5. How many customers (inventors or their representatives) have contracted with the Company for promotional services in the past 5 years; excluding those who have purchased trade show services research, advertising or other non-marketing service: and excluding those who have defaulted on payment: to the Company.
6. Is there an up-front fee and, if so, how much is it and what are you getting for it? How much will the complete process cost from submission of my invention to obtaining a patent and a licensing agreement? [Reputable firms have relatively small, if any upfront or other fees because they make their real money from successful royalty arrangements for the inventions they accept].
7. Has the Company ever been investigated by or been in trouble with the Federal Trade Commission, Better Business Bureau, any consumer protection agency or Attorney General's Office and if so, when and where?
8. Who selects and pays for the patent attorney or agent to do the patent search, patentability opinion and patent application preparation? [You should be able to select your own, because the attorney or agent represents you, not the Company].
9. Provide you with the names, addresses and phone numbers of five clients of the Company in you geographical area and copies of all contracts and forms to review [Do this before signing or paying any money].
10. Does the Company provide a written opinion of the “marketability” (that is, potential success) of your invention? [If all you get is a market analysis, for example, the number of potential customers, it’s probably not worth much].
The ten questions and seeing a number of complaints about their hero usually cools the deal. Ripoffreport.com and the Bob Villas Discussion Board have good information, also. The sales person's name in a google search, with the word "complaint" always yields a few hits, also. Once, after saving a client $25,000, I sent him a bill for $400 for the time I had spent researching his promotion company, as he had asked me to, and he got irritated about being billed for it. Well, Excuuuse me! Anyway, inventors beware. No one is going to market your invention but you.
As if inventors and business startups don't have enough problems, a new type of inventor scam is targeting inventors. One of my clients recently was contacted by a representative of Shop America Network. They said they had seen her product at a trade show, and they made a practice of contacting promising new products. They said they would prepare an infomercial for her product, and air it on TV. They said they rent time from all the major cable shopping channels, and it would be on the air for a lot of time.
Well my client, we'll call her Mary, did some checking. She called the Better Business Bureau in the town the company was located, and she called the television stations that the company said would air the commercial. The BBB didn't have any complaints, and each TV station said that the company did a lot of air time with them, and were constantly on the air. She was told by SAN that the about 1 in 4 of their customers saw sales of 80,000 units, and told her to be prepared to move that kind of volume.
The company had her fly to Florida to shoot the commercial. They asked that she redesign her product to better fit the target audience. This was on a product which has been on the market for 5 years, with annual sales of 50,000 units, approximately.
Mary plunked down $16,000, shot the commercial, and waited for the sales to flow in. A total of 3 units were sold from the ad, and she started to wonder why sales were so low. She found from internet sites that the TV stations she had called for referrrals on the SAN were all owned by SAN. They were tiny broadcast stations, not cable, and their broadcast range was less than a city block. So the ads could be on 24/7, but only a few homes would ever be able to recieve the signal. The home shopping channels told Mary that they didn't rent air time, so that claim by SAN was a lie.
The Florida Attorney General is currently either suing or investigating the company, but Mary's $16,000 is long gone. The company will probably reform in a new state, or with a new name. They are apparently doing business now as INCATALOG Inc. These people are predators, and should be prosecuted to the full extent of the law. There are discussions of Shop America Network at the Bob Vilas discussion board, and at ripoffreport.com.
Mary's business survived, but the experience set her back two years in the growth of her business, and could have killed the business. Inventors beware!! Perhaps the best tool to protect yourself from these kinds of scams is the ask the questions they are required by law to answer truthfully, and in writing, and check the internet for complaints about them. Ripoffreport also lists the owner and sales peoples name's, so check out the name of the salesperson you talk to.
1. I have a “Poor Man’s Patent” so I am entitled to stop others from “taking my invention”.
Only an issued patent can be used to keep others from copying your invention. The "poor mans patent", sending yourself a sealed envelope, is only useful to prove a date of conception.
2. My invention is worth lots of money because it is patented.
Many, if not most, patents are worthless. If the patent has very narrow claims, it could be easy to design around, and if it has broad claims, it could be hard to design around. This and many other factors affect the worth of a patent.
3. I am not infringing his patent because I changed my design more than ten percent from his patent.
If your device has each and every element of any claim in an issued patent, you are infringing. There is no ten percent rule.
4. I cannot infringe his patent because I didn’t know about it.
There is no intent requirement for patent infringement. If your device has each and every element of any claim in an issued patent, you are infringing.
5. My invention is patented so I have to keep it a secret or I will lose it.
Once the patent issues, it is a public document, and anyone can access it. The time to keep an invention secret is the time before the patent application is filed.
1. I know that this invention is patentable because I have never seen it anywhere else.
Wrong. Many devices are patented but never commercialized.
2. Patents are only for big corporations, they cost a lot of money, and I can adequately protect myself using contracts.
Wrong. If you ever want to keep competitors from copying your product, patents are the only way available to do it. If you ever want to sell your company, you also need patents to add to the value of the company.
3. Patent and Trademark searches are just tools that Patent Attorneys use to get extra money out of you.
Searches are optional, you just risk your larger investment in a patent application if you don’t have a search done first.
4. Invention promotion companies are mostly reputable organizations, with my best interest at heart. That's why they are on late night TV, because they want to help me.
See the Scam Prevention page on the US Patent and Trademark Office website for questions to ask, and warning signs on Invention Promotion Companies.
5. I have a new invention that I know that I have to patent so that I can sell it.
You can sell it without a patent, but after 1 year of first offer for sale, you can’t get a patent on it. If you sell it before filing patent application, you can’t ever get foreign patents.
The urban myth is that the poor man's patent is to send yourself a sealed envelope with a description of your invention. If Mega Corporation then comes up with the same idea, or rips off your idea, you can prove that you invented it first. Because look, the envelope is sealed, and that proves its never been opened, right? And it has a postmark on it to prove when it was mailed, so that's a slam dunk. Right?
Wrong! What this myth is centered around is that in the U.S., unlike other countries, the first person who conceives of an invention gets the patent on it. However, that conception has to be followed by due diligence to reduce it to practice. Filing a patent application is considered reducing it to practice. So you can't conceive of an idea, then do nothing for 5 years, and still get the patent over a person who filed during the 5 years you were asleep. However, there are times when you acted with due diligence, and someone still filed a patent application one day before you did. Then you want to be able to prove when you conceived the invention. Then whoever has the best evidence of conception gets the patent, after a long and costly contest to prove first conception. It's far easier and cheaper to the be first to file, than to have to prove first conception.
But if you do have to prove a date of conception, your envelope would be evidence of that. It would be crappy evidence, but it would be evidence. The gold standard in evidence is the inventor's research book, which is a hardbound book (not 3 ring binder), with blank, numbered pages. In it the inventor keeps a journal of the project(s), and records when he did what in ink. It also has receipts for parts, consultant services, photos, dates phone calls were made, notes when meetings happened, who was at the meetings, and other information that relate to the invention. Each page is also signed and dated by the inventor, and by another person (any person), who states that on a certain date, they read and understood what is written on this page. If you want to be real AR, you could circle the text portion on each page in ink, and link the circle to the signatures, proving that no text was added after the signatures were added. The signature could say, "Read and understood text within circle, Jan 15 2005, signed, Robert L. Shaver."
Bingo, that research book is gold, because that stuff can't be easily faked, and can be verified by other sources, and you have a witness for each page. The other side will find it impossible to refute that evidence, even if they have a self mailed envelope.
So if you are thinking of sending yourself a sealed envelope with your invention disclosure, know that it's not the Poor Man's Patent, its the Idiot's Patent.
A Provisional Patent Application (PPA) is a type of patent application that some inventors chose to file. A PPA never matures into an issued patent, and is actually never read by anyone at the patent office. Its purpose is to establish a priority date of an invention, and to make the invention patent pending. A PPA is active for one year, and after one year, it basically evaporates, and it is as if it never existed. Before the one year is up, an inventor needs to file a utility application if he wishes to keep the priority date of the PPA.
One risk in filing a PPA instead of a Utility application is that the disclosure may be inadequate, or what we call “thin”. When that happens, the priority date of the PPA might not transfer to the utility application that is filed on the invention. The rule is that if something is disclosed in a PPA, then when the utility application claiming priority from the PPA issues, then any claims that cover material that was disclosed in the PPA gets the priority date of the PPA. However, if the subject matter of claims was not disclosed in the PPA, then those claims don't get the priority date of the PPA. That rule makes the goal of a Provisional Patent Application (PPA) to disclose as fully as possible all the details and embodiments of an invention, so all the claims of the later filed utility application get the priority date of the PPA.
However, some inventors and even some patent attorneys just throw together some information and file it, since there is no requirement in PPAs to have claims or any particular format or content. If this information inadequately discloses the invention, the claims of the utility patent may not get the priority date of the PPA. So what should be in a PPA? The more it looks like a utility patent, the more sure you are that the disclosure is adequate. Is the disclosure adequate if it contains no claims? We don’t know for sure, since that may be determined by a future judge and jury in a patent lawsuit. The best way to be sure is to have as much disclosure as possible, including at least some claims.
You know you have been short changed by a patent attorney if he charges much for a PPA, but doesn’t spend any time writing claims or preparing as complete a disclosure as possible. I have seen some PPAs filed by patent attorneys that contained only the few pages of disclosure written up by the inventor. The inventor may have been charged $1500 plus for this “work” , but was basically cheated by the patent attorney.
If an inventor files his own PPA he should make the disclose as complete as possible, and consider having a patent attorney at least write some claims. If he hires a patent attorney to write it, it should contain 10 or 15 claims, and a clear description of the invention.
Recently I gave a seminar to non-Intellectual Property attorneys on "The 10 Things Your Clients Expects You to Know About Patents." This is #3 of that set of 10. What are factors that lead to an invention being a success?
Success in bringing an invention to market is very fact specific, however, some recurring factors can be seen in inventors that have been successful. One is that the invention is often made in the inventor’s field. Since it is in his field, he knows the problem, knows what is needed, knows what other devices have been tried to solve the problem. With all that, the inventor must know who will buy the product, how many possible buyers there are, and what they will pay for it. He must also know what he can build the product for. In addition, his depth of resources is important. He needs have personal resources, skills, and financial resources, either his own or from investors. Among his personal skills, he needs the required business skills, communication skills, management skills, and sales skills.
Here is a patent we did that has become very successful, Softspikes for golf shoes.
This is a plastic insert that replaces the metal spike of golf shoes. The Softspike gives a golfer good grip on the course, but doesn't shred the putting green, the carpet, and the wooden deck of the clubhouse. The factors it had going for it were that the inventor knew the problem, and knew what features were needed to replace the troublesome spike. The product was well received by the golf industry, and has been a huge business success.
I recently presented a seminar to non-intellectual property attorneys, titled "The Ten Things Your Clients Expect You to Know About Patents." This is # 2 of those 10 things: Should I get a patent or just out-compete the competition?
Some people think that because the technology in their industry changes so fast, its better to just be more innovative than your competition than to spend a lot of money on a patent. They plan to be always leading the pack, and to let their competitors play catch up. They also don't want to sink a bunch of money into a patent lawsuit, which they have heard is very expensive. Such people usually have an “educational experience” someday, such as when they develop a flagship product, instead of just rapid fire products. When the flagship product gets knocked off, and there is absolutely nothing they can do about it. Its not illegal to copy a non-patented product. Say their sales are $5 million, and suddenly a new competitor takes half their market share. Dang, the lack of a patent just cost them $2.5 million a year! Maybe a few thousand for a patent would have been a good investment. Maybe a few hundred thousand for a patent lawsuit would have made good economic sense after all. Usually from that point on, they patent every improvement to their product, to keep competitors at bay.
Another part of their learning experience comes when they try to sell the company. As part of the due diligence before the sale, the buyer will want to know about the Intellectual Property of the company. “There is none? What am I buying, the buildings?” The company owner can say “Well, we have always been very innovative, and we just always keep ahead of the competition.” The buyer will say, “I want to buy a company with some ownership of proprietary information, IP, not a promise about the future productivity of a person or team of people. If you had 10 or 15 patents on your core products or technology, I’d pay you $50 million (put your own numbers in here), but since you have no patents, and competitors can just get tooled up to produce cheaper than you, with no R and D expense, I’ll only pay you $5 million for your company." (put your own numbers in here) Dang, the lack of a patent just cost them $45 million! These are totally made up numbers, but you get the idea.
The third teachable moment comes when the client recieves a cease and desist letter from their competitor, saying they are infringing the competitor's patent. The business owner might react in several ways. Thats not fair! (tough) I believe these things should not be patented. (apparently your competitor disagrees with you) He can't patent stuff like that. (oh yes he can) Well, I haven't paid any patent attorneys yet, so I'm not going to start now. (fine by me, see you around). Ok, so I have to change my product 10% and I'm not infringing. (sorry, it doesn't work that way, my friend) I was doing this before their patent was filed. (can you prove it?) Man, this thing is going to cost me as much as filing my own patent would have. (that is correct). But my buddy told me patents only enrich the attorneys. (well, a patent in your competitors hands may put you out of business. So was his patent so worthless?) By the end of the episode, if they can still make that product, they may decide that patents, even if just for defensive purposes, may be worth the investment.
I have had clients in each of those situations, but never all three. Only a horse's a** would require three such learning experiences to get the message.
I recently presented a seminar to non Intellectual Property lawyers, titled "10 Things Your Clients Expect you to know about Patents". This is #1 of those 10 things, the others to follow:
So is your invention patentable? It’s amazing what is patentable. The general rule I believe anymore is that about anything is patentable, if it has not been done before. It also can’t be an obvious modification of already existing devices. If you can patent a style of combing your hair, I'd say about anything is patentable. These are from U.S. Patent 4,022,227, believe it or not.
There a few things that are by definition not patentable. This includes nuclear weapons (they are patentable, but the government demands to own them, for some reason), devices to achieve illegal purposes (card cheating machines), written matter, mathematical formulas, and perpetual motion machines. However, if you have a perpetual motion machine, and no one can talk you out of patenting it, there are plenty of such devices that are patented, they just aren’t called by that name. Here is an engine that runs on magnets, US Patent 6,274,959.
So if about anything new can be patented, the question becomes “is it worth patenting”? If the difference over prior art is small, then the patent claims must be very narrow. That makes it far less exclusive of competitors, and maybe not worth the cost of the patent. If the barrier to entry into that field is small, then a lot of people can copy your invention without risking a lot of money, and you can't sue them all. So a method of cutting hair is pretty unenforceable as a patent, but is an interesting souvenir.
Are there ever any times that it is advisable to write your own patent? Yes. If you want a patent that is going to be basically a non-commercial patent, that you don't plan to make money on, then I would certainly try it yourself. You can get several similar patents from the PTO database, modify them, write up some similar claims, and file it. When it is examined, you can call the Examiner and he will help you modify the claims so that they are allowable. You should end up with a patent, but don't count on it being useful to keep competitors from copying your product, or for licensing.
However, if you want a patent for commercial purposes, for licensing or to keep competitors from copying, it would be a big mistake to try write it yourself. This is hard for a lot of inventors to accept, because as scientists, engineers, PhDs, and stubborn individuals, they have typically been able to learn anything and do anything. However, the contents of a patent, and especially the claims, have to not only convey information, but also have to set the patent up for future interpretation by judges and juries, and to withstand attacks on validity for a number of reasons. An individual or enterprise is generally doomed if they insist on writing their own patents, because they are cutting corners on the quality of the foundation of their enterprise. They are literally saving pennies and losing dollars. In the long quest of bringing a product to market, the cost of obtaining a patent is a small part of the overall cost compared to marketing and manufacturing. If they so underfunded that they can't afford a patent, then they likely don't have the resources to bring the idea to market.
As an Idaho patent law office, we often are asked these questions:
Getting a patent is expensive, right?
No. Typically, an experienced patent attorney can evaluate your search results and advise you regarding whether or not to proceed with a minimal investment. Our usual charge for a patent novelty search is $550, but more extensive searches typically cost more.
Once you decide to pursue a patent, the next step is the preparation of the patent application and drawings. Application preparation costs are based upon the complexity of the subject matter of the invention. Thus, application preparation costs can range anywhere from a few thousand dollars to tens of thousands of dollars. The average application preparation cost for a simple patent application through our office is $4,500.00. Drawing costs (typically $200.00 to $400.00) may be billed separately. The Patent Office's filing fee for a utility patent applications is currently $385, assuming you qualify for "small entity" status, and the application has a typical number of claims. Total cost, start to finish, (including all attorneys' and Patent Office fees) is usually less than $5,000 over a two-year period.
That's it. Compared to what you have invested, or will invest, to develop your technology and business, that's a small price to pay to protect your intellectual property and maintain your competitive advantage in an increasingly competitive market.
As an Idaho patent law firm, a large portion of our business is in preparing and obtaining utility patents for our clients. A utility patent is a grant from the government of the right to exclude others from making, selling, or using the claimed group of functional features of an invention for a period of 20 years from the date the patent application was filed.
The owner of a utility patent must pay maintenance fees throughout the life of the utility patent in order to keep the patent enforceable. The first maintenance fee must be paid after the third year and prior to the expiration of the 3-1/2 year period from the issuance of the patent. The second fee must be paid after the seventh year and prior to the expiration of the 7-1/2 year period from the issuance of the patent. The third fee must be paid after the eleventh year and prior to the 11-1/2 year period from the issuance of the patent. There is a six-month grace period for each of these payments, with a penalty imposed, of course.
The "provisional" patent application system is a tool used increasingly by Idaho patent attorneys, and was created after the GATT treaty was signed in 1995. A provisional application may be filed without claims, is not examined or even read by anyone at the Patent Office, and, as the "provisional" name implies, is temporary. A provisional patent application expires exactly one year after filing and unless you file a utility application before the end of that one year period, you may be found to have abandoned your invention to the public domain.
The three main reasons to file a provisional application are: (1) in an emergency situtation where a filing date is needed to protect rights while a utility patent application is prepared (for instance, getting something on file the day before you show your invention at a trade show), (2) where the inventor needs to limit costs while trying to determine if the invention would be commercially profitable, and (3) where the invention is expected to have a long market life span (the provisional application could, theoretically, add an additional year to the term of the patent.
Because provisional applications are not examined, they can never mature into an issued patent. There is no such thing as a provisional patent.
It is important enought to bear repeating: a utility patent application must be written and filed based upon the provisional patent application within one year (the life span of the provisional application).
A provisional patent application cannot claim priority from another appliction, foreign or domestic.
While provisional patent applications were intended by Congress to make filing easier for inventors, these same applications often become a trap for unprepared inventors. The main traps are: (1) missing the one year date (when a provisional application is abandoned, it is gone forever), and (2) inadequate disclosure (if the disclosure is not clear and detailed, the resulting problems may completely void the application altogether.). Provisional patent applications also draw out the patent prosecution process, making it longer until you have an issued patent in hand (your competitors can only "infringe" your patent after it issues.
Preparation and filing of a provisional patent application typically costs 1/3 to 2/3 of the cost of preparing and filing a utility application. Then within one year, the inventor must also pay to have a utility application prepared and filed based on the provisional application. This can result in increasing total patent costs at least 1/3 to 2/3 over only filing a utility application in the first place. Many inventors would rather spend this additonal money on advertising, marketing and manufacturing the invention.