What Are Provisional Patents? (In Plain English)
Most of the time, the original idea you have for an invention will not be the final draft of the invention that you want to patent. There are details that need refining and time needed for research. However, very often, inventors find themselves in situations where it is in their best business interest to obtain patent-pending status before the final blueprints are drawn and a prototype is developed. In scenarios like these, it’s hard to accurately describe everything that needs to be covered in a full patent because you simply don’t know all of the details yet. With a provisional patent, you can get legal protection for your idea while allowing yourself time to hammer out the details.
The provisional patent application (PPA) takes some of the pressure off of the patent process by giving inventors way to claim “patent pending” status on their invention for a fraction of the effort and cost of a traditional application, albeit only for a limited time. Like all patent applications, a provisional patent effectively protects you from facing any statutory bars that would prevent you from manufacturing and selling your idea, as well as preventing others from manufacturing and selling your idea. It is essentially a short document written in plain English that consists of text and drawings describing your idea. It is much more informal than a regular patent and requires none of the arcane legal jargon. (For more on filing a provisional patent, see NOLO’s guide on Provisional Patent Application Procedures.)
When done correctly, a PPA establishes an effective filing date and allows you to claim “patent pending” on your invention for 12 months thereafter. Filing a non-provisional patent for that invention within that 12-month window then allows you to claim the PPA filing date as proof that your invention was filed before a competitor’s. It’s important to understand PPAs as the first step in filing a non-provisional patent and not an alternative to a non-provisional patent, as they only offer you protection for a short time. You will ultimately need to file a formal patent application to complete the process and fully protect your idea. However, there are marked benefits of filing a provisional patent first, as long as you know what pitfalls to avoid and remain wary and knowledgeable.
So what benefits does a provisional patent offer?
- It offers an expedited way to protect your invention
- It costs less to file than a traditional patent
- It buys you time to consider how to produce and market your invention
- It gives you legal protection as you negotiate production
Until recently, inventors could legally prove a date of invention that preceded filing a patent by documenting the building of a testing process. The U.S. adopted a first-to-file system on March 16, 2013, meaning that the first person to file a patent for a given idea is given rights to that idea. Under this law, it is in the best interest of the entrepreneur who wishes to profit from the legal protection of a patent to file sooner rather than later. While an inventor can of course file for a traditional patent application and begin to negotiate with manufacturers while they are in the purgatory of non-provisional patent-pending (manufacturers generally won’t risk ripping off an idea if there is risk of a patent infringement lawsuit), the time crunch can sometimes make it difficult to flesh out a viable patent in time to file before competitors. A proper patent application can also be a lot of time, energy, and legal expenses, meaning one should have a very clear idea of their invention and what they want out of it before filing. For more on considerations to make before filing a patent application, see how and when to file a patent.
An Expedited Way to Protect Your Invention
PPAs allow you to forgo some of the more complicated aspects of a patent application, such as the Patent Application Declaration (a statement made under penalty of perjury that you are the true inventor and have disclosed all known information relevant to the examination of the application) and the Information Disclosure Statement (a statement disclosing all the information known to you related to the originality of your invention). Even though the provisional patent does not require the same degree of detail as a full patent, it is still important to be careful in the wording used to describe your idea. A poorly done provisional patent may mean that you do not get any benefits from your idea—or worse, it may be used to demonstrate that at the time of filing you were not in possession of the designs for a particular invention, which is definitely not a best-case scenario.
A Cheaper Way to Protect Your Invention
PPAs are a valuable tool for anyone with a tight budget, i.e., nearly everyone in the patent world. No one has the money to protect every whimsy of an idea with non-provisional patents, but when you have a potentially patentable idea, you still need to take responsible steps to secure your rights. That’s where a PPA comes in. A PPA costs $65 for a micro-entity, $130 for a small entity and $260 for a large company. PPAs also end up costing much less in legal fees thanks to the lack of formal requirements. Between the lawyers and patent searches necessary to prepare a non-provisional patent, the application can end up costing into the tens of thousands of dollars. Additionally, unless you file a non-provisional patent claiming priority benefit of the PPA filing date, the U.S. Patent office will not do anything with your PPA, meaning no additional PTO or attorney fees unless you decide to move forward with your invention. While the financial benefits can be enormous, remember that you should not move forward impulsively, as a PPA can still end up being a waste of time and money if poorly prepared.
A Way to Buy Time in a Competitive Market
Since it’s best to obtain patent pending status as soon as possible in the current legal climate, you should consider filing a PPA once you have an idea that is concrete enough to describe. Then, as you take steps towards filing a non-provisional patent, you can make improvements to your original PPA, or even file a new PPA if your idea changes substantially from your first draft. This allows you additional flexibility in the development of your idea, as new subject matter cannot be added to a non-provisional patent once it is filed. If you are still in the development stages of your invention, you should definitely consider filing a PPA over a non-provisional patent.
A Way to Protect Your Idea During Business Negotiations
Most potential manufacturers can be trusted to be honest, but even so, there are few inventors in the market to patent an idea that would rely solely on trust when disclosing an idea to negotiate a deal. At the same time, most manufacturers are very understandably unwilling to sign binding non-disclosure agreements before even seeing an invention. (However, these business relationships do take place. You can learn more about trade secrecy and inventions at https://nondisclosureagreement.com/). In terms of your own business interests, it’s important to remember that under the America Invents Act, passed September 12, 2011, public sale of your invention or disclosure of your idea prior to filing a patent can interfere with your ability to obtain patent protection. A PPA allows you legal protection over your idea while you finalize the business plans needed for a non-provisional patent.
A word or two on disclosure
Unless the ideas in your PPA are disclosed properly, you will not benefit from an earlier filing date. When describing your invention in a PPA, you should disclose as much as possible to make sure your ideas are legally protected. There have certainly been many inventors with provisional patents who, upon filing for a non-provisional patent, were disappointed to find out that someone else had patented an aspect of their invention that they left out of the original designs. However, as stated before, improperly describing your idea at this stage can lead to problems if the idea changes significantly from the original blueprints. It is important to make sure that you have developed your idea and business strategy so that you can describe them in sufficient detail and avoid these complications down the line.
That means no cutting corners. Even though a PPA is much less formal than a non-provisional patent (and therefore, a bit less work for your lawyer), it still must provide a complete description of the invention that is broad in terms of what is covered, but specific enough to meet all patentability requirements at the time of filing. What do I mean by complete? Generally, a patent is considered to provide a “complete” description of the invention if someone familiar with the technology is able to make and utilize the invention using solely the patent application that is filed. Basically, your provisional patent should read like a good instruction manual for assembling and using your idea. For further protection, it should also include any alterations or variations that occur to you during the development process. If your invention begins to generate income, competitors will inevitably appear and try to gain access to your market. The more savvy competition is not going to infringe upon your rights, but will instead seek to approximate your invention as closely as possible without technically mimicking your idea. Therefore, you should think of your invention in terms of ‘what works’ and not just ‘what works best’ to make sure you are legally covered.
Whether or not a PPA is the correct move depends on your business plans, the stage of development of your invention, and the relative benefits of disclosure. While a PPA can seem like an entrepreneurial dream come true, it’s important to seriously consider all of these things before moving forward with any patent application. If the correct considerations are made, however, a PPA can offer you an excellent way to legally protect your intellectual property while allowing you time to iron out the fine details in order for the more involved non-provisional patent application.
When To File a Patent
Everyone has had an idea that struck them as the next ‘big thing’. You might quickly dismiss some of these ideas and move on. Other times an idea sticks. Hopefully you do a bit of patent research and think you might really have something that’s never been done before. These ideas whether out of nowhere or after years of careful consideration, hit us with such inspiration and originality that we can’t help but wonder, “Should I go ahead and patent that?”
While what you have in mind might rival the Roomba in innovation, its important to consider all factors before going through the legal process of filing a patent. Depending on the idea, market, and execution, getting a patent could either be the best business decision of your life or a big headache that costs you more time and energy than it was worth. Unfortunately, it’s not as simple as mailing in blueprints and collecting cash from anyone foolish enough to produce something similar to your invention. After you and your patent attorney submit a patent, your invention becomes “patent pending.” During this time, the patent office may contest aspects of your claim, leading to a back-and-forth between the patent attorney and examiner that’s known as a patent prosecution. Because of the complications that can arise during this process, it’s important to ask yourself these questions before taking the legal plunge:
- What do I want to accomplish with a patent?
- What are the benefits of patenting my idea?
- Is my patent viable?
- Is there a market for my invention?
- Can I expect to get claims covering a competitor’s idea?
What do I want to accomplish by patenting my idea?
What is your business strategy once you obtain a patent? Are you planning to manufacture and sell your product? Do you want to license the rights and benefit from the royalties? Do you simply want legal bragging rights for having a damn good idea? While affirmation from the United States Patent and Trademark Office might seem like exactly what you’re looking for, a patent may not be the best strategy going forward–even in the case of a patentable and marketable idea. For example, if your idea deals with the design or manufacturing of a product and would not readily be reverse engineered, keeping it a trade secret is worth deliberating. Determining the proper strategy requires reflection on what you hope to achieve using your idea and how a patent might facilitate that.
What are the benefits of patenting my idea?
What can a patent do for you? While ideas are a dime a dozen, the legwork required for a patent-worthy invention should be seriously considered before rushing over to your local patent attorney. There’s nothing worse than a patent sitting in your file cabinet and collecting dust while competitors benefit from the published blueprints of your brain-child.
The thing is, a patent is an explicit bargain coming from a long tradition of industrial practices—limited exclusivity in the rights to produce your invention in exchange for an understanding that those rights will eventually be shared with the public. It’s crucial to understand what this bargain means in the context of your idea and situation as you enter into the patent process. Great ideas happen all the time, but filing a patent and executing an idea takes thought and preparation. So, before you rush over to your nearest patent attorney, spend some time contemplating whether the potential rewards outweigh the potential costs.
The first thing to consider is the exact rights that patenting an idea will give you. A patent gives you the right to exclude others from making, using, selling, and importing a product or process covered by your claims. Many people (including Supreme Court Justices) explain patents as a monopoly, or as a legal process that provides a monopoly. However, the term monopoly in this setting is misleading. Patents do have the ability to exclude competitors from your target market, resulting in a sort of monopoly, but this requires a strong patent with solid claims. There exists a large gap between a baseline document you can push through the U.S. patent office (the majority of patents) and a patent that gives you an edge over competitors.
Is your patent viable?
Of course, as an entrepreneur, you’re probably banking on obtaining a patent that does give you a bit of a monopoly, which is why you must examine the viability of your patent before moving forward. The unfortunate reality is that the majority of patents that are filed do not result in financial gain for the investor. While the estimate for the percentage of patented innovations has risen slightly (from an estimated 2% to anywhere between 2% and 10%), this is mostly a result of the mass amount of portfolio licensing that happens at the highest corporate level. Given these odds, it’s essential that inventors flesh out their ideas before patenting—lest they run the risk of a rejected application (or worse, a successful application that is too narrow in scope to legally protect an idea). In a best case scenario for an entrepreneur patents give you an opportunity to build out a position before competitors can bite into your share of the market.
In order to determine the viability of your patent, you first need confirmation that your invention works. Whether through rigorous testing or a crude prototype, it’s important to know that whatever you are spending the time to legally protect is worth legally protecting and not a dud that wasted you several hours filing paperwork. You should then seriously consider whether or not a patent helps to promote your business goals to figure out whether it makes sense to move forward with a patent attorney.
If a patent really is the best choice for you, it’s time to look into a professional patent search. It’s important to know the scope of the rights you would be able to obtain in order to inform your business inquiries. If it turns out that there is not an opportunity to get rights through a patent, or that the anticipated rights would be quite narrow, there isn’t much point trying to file.
The road to riches isn’t well paved. It will take time, money, and energy to create a successful patent. Continuing to invest time, energy, and money only makes sense if the project continues to make business sense, so as you develop your idea and move forward into legal territory, it is important to periodically reevaluate the viability of your idea.
Is there a market for my invention?
Related to the idea of whether or not your patent makes business sense is whether or not there is a market for your invention. While considering potential markets when filing a patent may seem obvious, many inventors fail to properly do so. The simplest litmus test for whether or not there is a potential market is to talk to people who might be interested in your idea and listen to their opinion. If 20 people you know who are in your target market tell you that they’d be interested in your invention, that’s a fairly good sign. If 20 people in your target market all say that your invention would be a waste of money, you should probably go back to the drawing board. Now, for the real test, come back a few days later and ask those 20 people if they liked your idea well enough to tell anyone else about it. If a few people were interested enough to endorse you, you can guarantee more wide-spread enthusiasm for your idea
Finding a target market is easy for a lot of inventors, mostly because they’ve created an improvement to an existing gadget or have invented something that, although novel, does something more efficiently than whatever existed before (think of the switch from VHS to DVD). However, depending on your invention, it might be necessary to first create a market. This, of course, is much more difficult, as it requires convincing people that they need something they might not have previously thought about. For example, look at the DVR. Before we were able to pause live television and record our favorite shows, the DVR might have seemed excessive, but once you have a DVR, you quickly realize its utility. Of course, the utility of the DVR is fairly straightforward. With some products, you might need to create interest by educating the consumer about your product, creating demand and, ultimately, a market.
Without a market, your patent has no way to become a monopoly. Careful thought needs to be put into whether a market exists or can exist, how large that market is, and whether your invention can compete within the market. Patents that are litigated are litigated precisely because there is a market and, therefore, money at stake. However, numerous patents are created that obviously do not have a market and could never yield a monopoly that benefited the inventor. For examples, take a look at the Museum of Obscure Patents.
In addition to considering the parameters of your envisioned market it’s important to avoid exaggerating the size of the market in the heat of your excitement. Spend some time thinking about who will want to utilize your invention and why. This is extremely important, and really deserves its own article, but as you make predictions about the success of your idea, it’s imperative to remain realistic and avoid falling into the common pitfall of believing that everyone will purchase your product or service. Once again, there are tons of obscure patents out there that went nowhere.
Can I expect to get claims covering a competitor’s idea?
A successful idea begets copycats who want to take your market. It’s just business—nothing personal. Simple economics tells us that if there is money to be made then new people will continue to enter the market until all the additional money is tied up. A patent prevents these new entrants from encroaching on your market, which is another reason that before filing a patent you should have thought out the branding and development and have a clear idea of how your patent could be monetized.
In order to know whether a patent is worth the investment, the more important question is not “Can I get a patent?” but rather, “Will the scope of protection that a patent offers be legally advantageous?” While narrowing your claims can make obtaining a patent easier, it allows competitors the opportunity to take the barebones of your invention and layer on enough specifics to make it seem new. The US Patent Office is overflowing with digital file cabinets of patents that are exploited in this way.
So, should you decide to file, what sorts of claims will you be likely to receive, and will your patent prevent competitors from using your invention? After all, a patent isn’t a guaranteed royalties generator, but simply a document that gives you the right to exclude others from using your idea. Put another way, patents prevent mimicry of your idea, but they don’t guarantee that other people will want to pay to mimic it.
But if your idea is that good, why wouldn’t other people want to use it? Let’s take a look at the pharmaceutical industry as an example. In the fast-paced world of biochemistry, tons of compounds are developed that have the potential to treat various diseases and ailments. At the time of development, the pharmaceutical company has no way of knowing which compounds will be useful for research or will pass clinical trials and be approved by the FDA for sale. However, if they do not patent their idea, they run the risk of another company manufacturing the next big cancer drug or the cure for Parkinson’s. As such, pharmaceutical companies spend millions obtaining patents, only a few of which end up benefiting them.
As a pop-culture example, think about the corn-baller, the fictitious kitchen appliance from Arrested Development that was marketed by George Bluth in the 1970s. While the corn-baller remained a Bluth family staple, its tendency to give its operators serious burns meant that other producers were not likely to try to reproduce it, making any patent George Bluth might have filed unprofitable.
Remember: There are many different regulations surrounding the types of goods that can be sold and produced and how these goods are sold and produced. Getting a patent does not mean that your idea will meet these regulations and that you will have the right to sell or market your invention. It only means that you can prevent competitors from selling or marketing your idea.
While deciding whether or not to patent an idea can seem daunting, making these considerations during the planning stages should leave you well prepared and well equipped to file a patent. Success isn’t easy, and failure unfortunately common, but if you believe in your idea and plan correctly, you may find yourself well on your way to business prosperity.