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...And How Should You Use It?

In my first post on this subject I mentioned before that I have changed my views on the provisional patent application over time. When used in the context of your business strategy it can be an effective intellectual property tool.

So what does that mean....

There are some compelling reasons for using this form of intellectual property - let's talk about some of the advantages first. Note that the advantages are situation specific.

The business world I work in is the great world of small businesses and individual inventors. Many of my clients in that space sometimes come to me with a very clever and inventive concept but are not yet sure it can be made into a reliable and affordable product. They often also are not sure about the market. This situation leads to the first characteristic of the provisional. It is lower in cost to file and once you file the provisional patent application, you have a year before you must file for a regular patent. This year gives you time to better assess both the market and the product. If you conclude during that year that the product and/or the market are just not there you can then decide that the cost and trouble of filing a full non-provisional patent is not worth it. The savings are in the thousands and sometimes tens of thousands of dollars (U.S.).

Special note

Before you get too excited about the cost savings - note this cost savings is only if you never get a patent! If you do file a regular patent within 12 months there is the cost of that comes into play. In my experience the total cost once you do that is at least the same as if you had filed a regular patent from the get-go. And it may be slightly higher.

A second advantage - you stake a claim on the invention at a reasonable cost. Once you file the provisional you are completely entitled to use a "Patent Pending" notice on a product or product announcement. This can (sometimes) be very useful if you need to go public with the invention during that year. As an aside I often hear people say that a Patent Pending is useless without a patent. I completely disagree. My experience has been that most companies are reluctant to make a large investment in copying an invention once they hear that there is a patent pending. On the other hand many small companies and inventors need that entire year to evaluate their product and market and do not announce that they have a patent pending - preferring to keep it a trade secret.

Related to staking a claim on the invention at a reasonable cost - you also stake a claim on a "priority date".

You establish a “date of invention.” The US Patent Office follows a “first to invent” rule. If there is a dispute between you and another inventor, the person with the earliest “date of invention” gets the patent. Because not all inventors can afford to create working prototypes and build and test their inventions, and not all inventors are diligent about maintaining witnessed notebooks to evidence the date of conception, filing a provisional patent application is often the easiest or even only way to establish the date of invention. Also, if your patent is later granted, the provisional patent application date (rather than the later date of the regular patent application) is the date from which your rights commence.

In summary there are some obvious advantages to using this approach for protecting your business - and I use them a lot more than I did before.

Caveat - go back and read my first post about the dangers of  a provisional. It it not done well it can lead to a disaster.