State of Innovation

Patents and Innovation Economics

Patent Delay Strategies, Inventor’s Notebook and Provisional Patent Applications

The cost of a patent application usually comes in the early stages of commercializing your invention.  This makes it difficult to estimate a return on obtaining a patent.  If you do not have a revenue stream associated with the patent, then it is an extremely expensive speculative investment.  So what can we do to reduce the risk on investing in patents?

There are a number of ways to delay the cost.  One of these delay techniques is to use an inventor’s notebook.  In the US we are a first to invent country.  That means I can file a patent before you, but you may end up with the patent rights if you can show you invented the item before me.  Note that almost every other country in the world has a first to file rule.  An inventor’s notebook is used to establish your date of invention.  A good inventor’s notebook is a notebook with consecutively numbered pages that cannot be removed from the notebook.  There are a number of sources that sell inventors notebooks.  The inventor should write in ink and date every page.  At the bottom of each page, a witness should sign that they read the page and understood its contents, sign their name and date it.  A good witness is someone who understands the invention and does not have a direct financial interest in the invention.

Note that these rules are not required by the law, but are used to establish the truth of the evidence showing your date of first invention.  This is the process you should use to establish the date of invention.  You should not send yourself a certified letter that is unopened.  The certified letter will have little value as evidence of the date of invention.  If you cannot use the inventors notebook as described above, then use the patent offices’ document disclosure program.  This only costs $10 and a stamp.  For more information, see the patent offices website, www.uspto.gov.

When two inventors file patents on the same invention, the process of determining who was the first to invent the items, is called an interference.  Interferences are expensive and all the procedural rules are in favor of the person who filed first.  As a result, something like 90% of all interferences are won by the party who filed first.  You may be thinking that this is contradictory with our first to invent rule in the US.  However, we also have a competing rule that encourages you to not delay in filing your patent application.  As a result of the practical realities of interferences, I suggest that people use provisional patent applications to establish an early filing date but delay the cost of filing a regular patent application.

A provisional patent application allows the inventor to say patent pending with their invention.  Note, you do not say “provisional patent pending”, just “patent pending”.  No one need know whether you filed a regular patent application or a provisional patent application.  In addition, a provisional application establishes a filing or priority date, not just the date of invention.  Thus, it can be used to establish that you were the first to file in an interference.

The provisional patent application gives you up to one year to file a regular patent application and claim priority off of your provisional.  This means that for most practical purposes, the patent office will treat the regular patent application as if it was filed on the same day as your provisional.

I think of a provisional as buying an option on a patent.  There are fewer legal formalities with the provisional.  As a result, provisional patent applications can be filed for significantly less money than a regular patent.  Among patent attorneys provisionals are controversial.  As a result, every patent attorney has a different program for provisional patent applications.  At the Law Office of Dale Halling, we have developed an inexpensive program for preparing and filing provisional patent applications.  Using our program, the cost of filing a provisional is usually less expensive than obtaining a patent search and opinion.  For more information on our provisional patent application program, please visit our website (www.hallingip.com) or call us.

There are several situations where I believe provisional patent applications are not appropriate.  For instance, if you invent a major or fundamental break through in an area of technology, an example would be the laser.  In the case of a fundamental invention, I do not believe the risk of filing a provisional justifies the rewards.  Another situation where provisional patent applications are inappropriate is when the invention is already generating sufficient income to pay for the regular patent application.  A provisional should not be considered a no-risk strategy and when the invention can pay for the regular patent application, you should not delay filing.  I suggest that as soon as the invention is generating significant revenue, you file.

A provisional patent application may be used when the invention is not presently generating any revenue and is not an extension of an item that is producing revenue.  Examples include an independent inventor who is planning to create a business around the invention, or a company with a total new and untested product or service.  The value of a provisional application to an independent inventor whose only goal is to license the invention is somewhat less that an independent inventor who wants to start a business.

However, I know a number of successful independent inventors that only license their inventions that use provisional to reduce the risk.  They wait until a company is willing to license the invention to file a regular patent application if possible.  Use provisional applications to reduce the risk off investing in patents, by delaying the cost of a regular patent application until the return from the invention can be better accessed.

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June 10, 2009 - Posted by | -How to, Patents | , ,

7 Comments »

  1. Thanks for posting, I’ll definitely be subscribing to your blog.

    Comment by How to Make Thousands of Dollars Posting Links on Google | June 10, 2009 | Reply

  2. I am an Irving, TX based patent agent but not actively involved in drafting/ searching for clients. Recenlty I was introduced to an Indian IP firm offering such backhand services. Do attroneys in USA use such services offered from India? What should I be concerned about? How does TIAR / export law affect this?

    I would appreciate if you can educate your readers about this subject.

    Amit Dharia, Ph.D.
    Owner
    Transmit Technlogy Group. LLC
    Irving, TX 75063

    Comment by Amitkumar Dharia | June 13, 2009 | Reply

  3. There is an interesting angle to the question you raised here. Patenting can cost quite a bit (according to statistics at http://www.PatentCostInfo.com and it can take as long as 6 years and then once it’s patented it can be knocked off or counterfeited in weeks or just months. See the quote by Jonathan Paul Meyer at http://www.inventionstatistics.com/Patent_Approval_Time.html
    Thanks,
    Elick

    Comment by Elick Jones | June 18, 2009 | Reply

  4. What about licensing an invention instead of investing in manufacturing it yourself? Isn’t that another way to address cost issue and reduce risk exposure? See http://www.inventorinsights.com/Licensing_Vs_Manufacturing.html Couldn’t you also make an effort to convince the manufacturer or licensee to pay for your patent costs (see http://www.advice-for-inventors.org )? Or find a company to license your invention (http://www.inventorinsights.com/Help_Licensing_Invention.html )?
    Alyste

    Comment by Alyste Lourindal | March 5, 2010 | Reply

    • Hi Alyste,

      Yes you can attempt to license your patent to a manufacturer. I know several inventors who have been successful at doing this. When a licensing deal is working well it is the best situation in the world. However, there are a number of potential pitfalls including that there is still a lot of “Not Invented Here” syndrome in the world that makes it hard to license your invention.

      Comment by dbhalling | March 8, 2010 | Reply

  5. You say “There are several situations where I believe provisional patent applications are not appropriate. For instance, if you invent a major or fundamental break through in an area of technology, an example would be the laser. In the case of a fundamental invention, I do not believe the risk of filing a provisional justifies the rewards.” Do I understand this correctly that an inventor should husband the time before they publish in patent form because there are only 17 years of patent protection? For example, taking the cue Elick above I went to http://www.inventionstatistics.com/Patent_Approval_Time.html and discovered that once you patent your invention (publish it to the world) it can be copied, counterfeited and pirated within weeks. Is that what you mean? We should be careful not to publish the patent too soon?
    Frank Jeffers
    Thousand Oaks, CA

    Comment by how much lasik eye | July 7, 2010 | Reply

  6. Hi Frank,

    I think you are confusing a couple of things. A provisional patent application is never published. You can request that your regular patent application not be published, but only if you agree to never foreign file. I think new companies should think about requesting non-publication because of the long time it takes to obtain a patent today. There is limited protection for an inventor if their invention is stolen between publication and issuance of the patent. But in most cases this limited protection provides very little advantage to the inventor.

    A provisional patent application (PPA) is always a second choice. If money and time did not matter then you would never file a PPA. In the case of an invention that is a major technology break through, I do not believe the savings in time and money justify the risk associated with filing a PPA.

    Note that patent protection is now 20 years from the date of filing, not 17 years from the date of issuance.

    Comment by dbhalling | July 8, 2010 | Reply


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