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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