Israel Marketing and Business Development

Home Page

Newsroom

From the Top

Business Buzz

Provisionally Patenting

Necessity may be the mother of invention but patents are the guardians. This look at provisionally patenting your creation is the second in a continuing series of features on patents. But first a blast from the past.

History 101

Question: Which U.S. President held a patent for "A Device for Buoying Vessels Over Shoals?"

Answer: None other than Abe Lincoln, who went down in posterity for reasons other than a pair of bellows that never actually got off the ground. Calling the introduction of patent laws one of the three most important developments in the world's history, along with the discovery of America and printing (this being way before IT and Prozac), Lincoln stated, "The patent system added the fuel of interest to the fire of genius."

Back to the present, and patenting the fire of genius has evolved into a multi-million-dollar industry. The U.S. Patents and Trademarks Office alone considers thousands of patents every week. Today there are four principal legal tools available to protect your invention: Non-Disclosure Agreements (NDAs), Provisional Patent Applications (PPAs), Formal (regular) Patent Applications (FPAs), and Patent Cooperation Treaty applications (PCTs). You really need to remain focused and objective in this game to make sense of your options and patent accordingly.

Temporary Beauty

Provisional patents are considered by some as a thing of beauty but they are not a joy forever — they are valid for a year only. Introduced into law in the United States in 1995, a PPA provides a priority date for one year of "patent-pending" status, and it can be self-filed as a small entity for $75. After a year the inventor will have to file a FPA and/or PCT to carry forward the priority date, in order to maintain patent protection. A PPA gives sufficient information so that someone "skilled in the art" can reproduce the invention. It is not examined until the next step — usually filing for a regular patent — is taken. Note that although a PPA is recognized theoretically only in the United States, in practice, other countries also accept them.

Half a Dozen of One

Considered by advocates as a "good, cheap way of getting your foot into the door," a PPA is judged to be a cost-shifting tool for inventors who are fund-challenged and/or uncertain of the marketability of their invention. A PPA gives you a one-year window for a serious investigation of market-worthiness and a protected breathing space. And the cost is much lower than the cost of preparing and filing a FPA. However if funds are not a problem and you are confident of a market, it is probably advisable to go straight off for the FPA.

And Six of the Other

Patent attorney N. Paul Friederichs in his commentary "Patent Strategies" (1998) has this to say about the pros and cons of PPAs: "Provisional patents have been resoundingly praised by some and resoundingly despised by others. Typically this line is determined by those serving the independent inventor and those serving corporate interests."

And here's the catch. An independent inventor may be actually putting him/herself at a disadvantage by filing for a PPA, as investors might look more favorably on a regular patent application. Application for an FPA can be interpreted as a big sign of confidence in the marketability of your invention.

Proper Disclosure

Filing for a PPA should be taken as seriously as filing for an FPA. Friederichs warns, "The PPA should contain the full and complete disclosure (including detailed description and drawing) of the invention equivalent to the quality level found in an FPA." An inadequate disclosure can lead to all kinds of problems like complete loss of rights, so it is worth doing it properly.

In Short

A PPA can be a valuable legal instrument if you have limited financial resources and have little idea about whether or not your creation is marketable (of course at this point it's doable), if you are manufacturing your product yourself and don't know your sales potential, or if you need quick protection. Plan a proper patenting strategy based on your options and potential: what to file for, when to file and where to file. Then ensure that the application is complete and accurate, otherwise you could lose all...

In conclusion, Friederichs points out that "Patents provide a monopoly that prevents others from making, using, selling, offering for sale or importing infringing products into the country issuing the patent. Accordingly, one should pick their patent strategy in view of their marketing plan and countries in which they or their ultimate licensee may engage in business." In other words, it's your call.