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IP Resource Center

LOW-COST PATENTING STRATEGIES

by Evan R. Smith and Charles M. Leedom, Jr

Entrepreneurs, technologists, and their advisers should be aware of new, reduced-cost, alternative strategies for preserving rights in patentable inventions during the early phase of concept development. These new strategies derive from an important change in U.S. Patent Laws allowing the filing of provisional patent applications.

Since the U.S. Patent and Trademark Office began accepting provisional applications in June 1995, the popularity of this new type of application has grown steadily. The Office received 8,000 provisional applications in the last part of 1995, and expects 22,000 provisional filings in 1996 and 31,000 in 1997.

Advantages of Provisional Applications

Provisional applications can be filed with an investment of as little as a few hundred dollars. An early provisional filing provides:

  • A precisely identifiable piece of intellectual property which can be licensed, sold, or used to gain credibility with potential investors.

  • Evidence of invention - an earlier filing date provides procedural advantages, especially if others file similar applications.

  • The right to advertise the product as "patent pending."

  • An entire year to seek capital, test markets, refine the product, and find out whether the idea has "critical mass" before incurring the substantial expense of filing a regular utility patent application.

Preservation of Rights

A U.S. patent application (either provisional or utility) must be filed within one year of the first public disclosure, public use, publication, or offer for sale of the invention. Otherwise, all rights in the invention will be lost. Product demonstrations, distribution of printed information and advertisements, and discussions with customers about purchasing a product under development can all start this one year period running.

U.S. laws permitting disclosures before filing are generous compared to foreign laws. Under international conventions, patent offices in most foreign countries treat applications filed within one year of a U.S. filing as if filed on the U.S. filing date. However, ANY divulgation of the invention prior to filing a U.S. application will result in forfeiture of patent rights in many countries, including Japan, Germany, and other important markets.

In the past, many smaller companies and entrepreneurs were discouraged from preserving foreign patenting options because of the high, front-loaded costs of utility patent applications. The realities of new product development often dictate "testing the water" through early contacts with both potential investors and customers, and many entrepreneurs simply cannot justify the typical $5,000 to $10,000 cost of a utility patent application at a point prior to any disclosure of the invention.

A timely filed provisional application will stop the one-year clock under United States law, and filing before any divulgations will protect rights in most foreign countries.

Mechanics of the Provisional Strategy

Unlike a standard utility application, the provisional application is not examined and cannot issue as a patent. The provisional application has a life of exactly one year. Before the end of that year, if protection is still desired for the idea, a utility application and any desired foreign applications must be filed claiming "priority" of the provisional case.

Since the provisional application is not examined, it need not meet all the format and content requirements of a utility application. Attorney preparation time is reduced, because claims (the part of a patent that defines the scope of coverage) are not required.

The provisional application must provide a disclosure that: (1) is complete enough to enable a person of ordinary skill in the relevant technical field to make and use the invention; and (2) discloses the best way of making the invention known to the inventors at the time of filing.

Depending on the circumstances and the level of protection desired, the following are a few examples of materials that the concept developers might prepare for the attorney as the basis of a provisional application:

  • A complete description of the idea including sketches;

  • A detailed business plan describing the product or service and its uses;

  • Preliminary concept marketing materials and schematic or assembly drawings of a prototype; OR

  • For software inventions, a general description of software functions and documented source code or flow charts.

Although cost-conscious clients may prepare much of a provisional application themselves, they should work under the supervision of a registered patent attorney having experience in both obtaining and enforcing patents, to ensure that the application successfully preserves the desired rights.

Disadvantages of Provisional Applications

While the provisional application offers real benefits to many companies and inventors, it is not the right strategy in every case.

Timing Issues

The provisional route delays expenses for up to a year, but similarly delays issuance of any patent. Thus, if protection is needed quickly, it is better to immediately file a utility application.

Foreign Filing Issues

Filing any type of application creates a deadline, one year from the U.S. filing date, for foreign filings claiming priority of that application. Thus, when following a provisional strategy, foreign patenting expenses may be accelerated to the extent the application is filed earlier in the development cycle. This disadvantage can be minimized by using the Patent Cooperation Treaty (PCT) to accomplish the U.S. and foreign utility filings. Although government filing fees for a PCT application may be several thousand dollars, filing a PCT application further postpones the expense of individual national filings for up to 18 months.

Initially, there was controversy about whether the provisional application provides a valid basis for foreign priority claims under the pertinent treaties. The European Patent Office and the World Intellectual Property Organization (among others) have taken the position that provisional applications are fine for this purpose. Although this issue seems to have been settled, the provisional-type application is subject to interpretation by foreign courts, and prudence dictates filing a utility application in cases where clients cannot abide any risk to foreign patent rights.

Excessive informality in the provisional application could also undermine a foreign priority claim. High perceived importance of foreign patent rights may justify extra effort to make the disclosure look more like a utility patent application.

Conclusion

During the one year term of a provisional filing, applicants may preserve U.S. and foreign patent rights while they develop the invention, seek capital, evaluate marketability, offer licenses, and investigate manufacturing arrangements; applicants can then decide whether the idea merits a more significant patenting investment. This strategy is a useful option for individual inventors, small companies, and even major corporations.

Copyright 1997 Nixon Peabody, LLP (Patent, Trademark and Internet).
All rights reserved. Used with permission.

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