Independent inventors often face a complex problems. Mostly they ask the question of how to present their invention to potential manufacturers without running the risk of the manufacturer “stealing” it. As a patent attorney, I run into this question all the time from inventors who are concerned about balancing the need to talk about their invention versus the need to promote and commercialize the invention. Worry no more, a provisional patent application protects your invention for a low cost and buys time to file a regular patent application. This article gives some of the basics for provisional patent application.
Can you rely on trade secrets to avoid patenting?
Many investors think that patent protection is expensive and resort to keeping the invention as a secret. However, this approach runs counter to the way of today’s sales and marketing approach. Simply put, you need to talk to investors, manufacturers, and distributors to make progress in commercialization. However, most manufacturers (and even investors) will not sign binding NDAs for various reasons. While most potential people are trustworthy and will play fair, inventors don’t want to depend on this alone when disclosing their inventions.
Protecting your invention as a trade secret can be an effective way to keep your invention confidential, but there are a few potential problems that you should be aware of:
- Difficulty in enforcing trade secret rights: Trade secret rights are difficult to enforce, as it can be challenging to prove that someone has misappropriated your trade secret. In addition, trade secret rights are generally limited to the geographical area where you can prove that the trade secret has been used in commerce.
- Limited duration of protection: Trade secret protection lasts as long as the information remains a secret. If the trade secret is discovered or independently developed by another person, the trade secret protection will be lost.
- Difficulty in preventing reverse engineering: It can be difficult to prevent others from reverse engineering your invention, which can lead to the loss of your trade secret.
- Difficulty in licensing or selling your invention: If your invention is protected as a trade secret, it can be difficult to license or sell the invention to others. This can limit the potential revenue that you can generate from your invention.
- Difficulty in proving ownership: If someone else independently develops your trade secret, it can be difficult to prove that you were the original owner of the trade secret.
- Difficulty in protecting against internal threats: if an employee or a contractor with knowledge of the trade secret leaves the company, it can be difficult to prevent them from disclosing the trade secret to others.
It’s important to consider these potential problems when deciding whether to protect your invention as a trade secret. In some cases, it may be more appropriate to protect your invention through patents or other forms of intellectual property protection. It is also important to have a robust trade secret protection plan in place and to consider the legal and practical implications of protecting your invention as a trade secret.
So what can you do? Filing a regular patent application can be a tedious task and may prove costly if you use an attorney.
The solution: Filing a Provisional Patent App (PPA)
Congress offers inventors another option like filing a provisional patent application on the invention (PPA). A PPA is a way for an investor to claim pending patent status for 12 months. However, it requires a fraction of the time and costs of a regular application for a patent.
A provisional patent application comprises text and drawings. These documents describe how your invention works with as much details as possible in your own words. It should be a technical description of how the invention works, but since you are the inventor this should be easy. No legalese is needed!
An effective filing of your invention presides this. You can then use the term “patent-pending” to refer to your invention for 12 months after that date. To get the provisional application to issue as a patent, you can file a regular application for a patent within one year.
Trade Secret Misconceptions
Many startup founders believe that keeping their inventions secret is simpler and cheaper than seeking patent protection. While it’s true that maintaining a trade secret doesn’t involve the same initial costs as filing for a patent, the hidden costs and potential pitfalls can be substantial. Trade secrets require stringent measures to keep the information confidential, which can become complicated and expensive over time.
Legal Enforcement Challenges
Enforcing trade secret rights is notoriously difficult. Unlike patents, which are publicly recorded and can be easily referenced to establish ownership, trade secrets must remain confidential.
Proving that someone has stolen or misappropriated a trade secret can be a lengthy and costly legal battle, often requiring forensic investigations and expert testimony. This can be particularly challenging for startups with limited resources.
Geographical Limitations
Trade secret protection is not universal. The rights are typically limited to the jurisdictions where the secret has been used in commerce. This means that if your business operates internationally, you might only be able to enforce your trade secret rights in specific regions. In contrast, patents provide broader protection and can be enforced in multiple countries where patent applications have been filed.
Vulnerability to Reverse Engineering
Another critical consideration is the ease with which a trade secret can be reverse-engineered. If your invention can be easily replicated by someone with the right technical expertise, keeping it as a trade secret might not be sufficient.
Once someone else figures out how your product works, your trade secret protection evaporates, leaving you with little recourse to prevent others from copying your innovation.
Issues with Licensing and Sale
When it comes to commercializing your invention, having a trade secret can complicate matters. Potential licensees or buyers often prefer clear, legally defined protection, such as a patent, to ensure they are not at risk of infringing on someone else’s rights.
The lack of formal protection can make your invention less attractive to investors and partners, potentially limiting your business growth and revenue opportunities.
Employee and Partner Risks
Internal threats are another significant risk factor. Employees, contractors, and business partners who have access to your trade secrets might inadvertently or maliciously disclose them.
Implementing comprehensive confidentiality agreements and robust internal policies is essential, but these measures are not foolproof. The risk of internal leaks means that maintaining trade secrets can be an ongoing challenge that requires constant vigilance.
Balancing Secrecy and Commercialization
Successfully protecting a trade secret requires a delicate balance between maintaining confidentiality and promoting your invention to potential investors, partners, and customers.
Most stakeholders will be reluctant to sign non-disclosure agreements (NDAs) upfront, which limits your ability to freely discuss and market your innovation. This can slow down your business development and reduce your competitive edge.
Strategic Use of Provisional Patents
For many startups, a more strategic approach is to file a provisional patent application. This allows you to claim “patent pending” status, providing a level of protection while you continue to develop and market your invention.
It gives you a 12-month window to refine your product, test market viability, and secure funding before committing to the more expensive process of filing a full patent application.
How PPA differs from a regular patent application
It is cheaper.
While PTO fees constantly change, as of January 2023, a PPA costs around $130 for small entity and $64 for a micro-entity if you quality. This amount is far less than the thousands to tens or tens of thousands of dollars it takes to conduct a patent search and to prepare a complete non-provisional patent application.
It’s Easy to do.
The cost of the provisional application is low because it is not examined and the process does not grant you a patent. It is simply a placeholder for your description of the invention. As such, anything can be included in the provisional application. That said, you should describe your invention in as much details as possible.
Consider adding lots of diagrams or photos of your invention is another good way to have depth in the description as “one picture is worth a thousand words.” Also, if you have internal documentations on the operation of the system, the maintenance of the system, and user manuals, put them all into the provisional application to be safe.
Providing as much detail as possible in a provisional patent application can be beneficial for several reasons:
- Improves the chances of getting a patent granted: The more detail that is included in the provisional application, the more likely it is that the invention will be considered novel and non-obvious by the patent office. This can increase the chances of getting a patent granted.
- Increases the scope of the claims: A provisional application that includes more detail can help to define the specific features of the invention that are novel and non-obvious, which can help to increase the scope of the claims in the non-provisional application.
- Increases the value of the patent: By including more detail in the provisional application, it is more likely that the patent will be more valuable, as it will be more likely to cover a broader range of potential uses and implementations of the invention.
- Increases the chances of being able to license or sell the invention: By providing more detail in the provisional application, it is more likely that the invention will be considered more valuable and attractive to potential licensees or buyers.
- Increases the chances of being able to prevent others from copying the invention: By providing more detail in the provisional application, it is more likely that the invention will be considered unique and original, which can make it more difficult for others to copy.
- Improves the chances of being able to prove ownership: By providing more detail in the provisional application, it is more likely that the invention will be considered unique and original, which can make it more difficult for others to claim that they independently developed the invention.
- Increases the chances of being able to defend the patent in court: Detailed provisional application can be used as evidence in court to demonstrate the inventors’ conception of the invention, which can help to defend the patent in court.
In summary, providing as much detail as possible in a provisional patent application can be beneficial in increasing the chances of getting a patent granted, increasing the scope of the claims, increasing the value of the patent, and increasing the chances of being able to license or sell the invention, and defend the patent in court.
While you decide whether you wish to file for a regular or provisional patent, the PPA allows you to preserve your rights for a one year period, after which you must convert to a non-provisional application to keep the early filing date of the provisional application.
Cost Considerations
One of the most significant differences between a PPA and a regular patent application is the cost. Filing a PPA is considerably cheaper. As of January 2023, the cost for a PPA is around $130 for a small entity and $64 for a micro-entity, provided you qualify.
In contrast, filing a regular patent application can run into thousands or even tens of thousands of dollars when you factor in patent searches, attorney fees, and the detailed preparation required. This cost difference makes a PPA an attractive option for startups looking to secure their invention without a substantial upfront investment.
Simplicity and Ease of Filing
The process of filing a PPA is much simpler and more straightforward than that of a regular patent application. A PPA does not require the same level of formalities, detailed claims, or examination process. Essentially, it acts as a placeholder, giving you a “patent pending” status while you refine your invention and business strategy.
This simplicity allows inventors to draft and file the application themselves, although it’s still advisable to seek professional advice to ensure all necessary details are included.
Time to Refine and Test the Invention
A PPA grants inventors a 12-month period to evaluate and develop their invention further. This period is invaluable for startups, as it provides time to conduct market research, seek investment, and make any necessary improvements to the invention.
This “patent pending” status can also enhance your credibility when discussing your invention with potential investors, partners, or customers, showing that you are serious about protecting your intellectual property.
Scope and Detail of Disclosure
While a PPA requires a detailed description of the invention, it does not need the formal claims required in a regular patent application. This means you can focus on providing a comprehensive and technical explanation of how your invention works without worrying about the precise legal language.
Including drawings, diagrams, and as much technical detail as possible is highly beneficial, as it can strengthen your application and provide a solid foundation for your future regular patent application.
Flexibility and Strategic Planning
Filing a PPA allows for strategic flexibility. If, during the 12-month period, you decide that patenting your invention is not viable or necessary, you can choose not to proceed with a regular patent application.
This flexibility helps startups manage their resources more effectively, avoiding the significant costs of a regular patent application until they are sure of the invention’s commercial potential. Moreover, if your invention evolves or improves during this period, you can file another PPA to cover the new developments, ensuring that all aspects of your innovation are protected.
Legal Protection and First-to-File
A PPA establishes an early filing date, which is crucial under the “first-to-file” system used by the U.S. Patent and Trademark Office. This means that your rights are secured from the date of the PPA filing, even if you file the regular patent application later. This early filing date can be vital in disputes over who invented something first, giving you a strong position if someone else files a similar patent application.
Conversion to a Regular Patent Application
After filing a PPA, you must file a regular patent application within 12 months to benefit from the early filing date of the PPA. This conversion process involves preparing a complete and detailed patent application with formal claims and undergoing the examination process.
If you miss this deadline, your PPA will expire, and you may lose the priority date. However, during this 12-month period, you have the opportunity to assess the commercial viability of your invention, gather the necessary resources, and ensure that your regular patent application is as robust and comprehensive as possible.
How to File a Provisional Patent Application
The provisional application papers (written description and drawings), filing fee and provisional cover sheet can be filed electronically using the USPTO Patent Center or filed by mail.
Electronically Using Patent Center: The provisional application documents can be filed electronically at the USPTO only if the Patent Center is used. The Patent Center allows patent applications, including provisional applications, to be filed securely via the Internet. You can prepare your provisional application in the Portable Document Format (PDF), attach the documents, validate that the PDF documents will be compatible with USPTO internal automated information systems, submit the documents, and pay fees with real-time payment processing. When fillable EFS-Web forms are used, the data entered into the forms is automatically loaded into USPTO information systems.
By Mail: The provisional application and filing fee can be mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Preparing Your Documentation
The first step in filing a PPA is to prepare a comprehensive written description and drawings of your invention. This documentation should be as detailed as possible, clearly explaining how your invention works and what makes it unique. Think of this as telling the story of your invention from conception to its current state, providing enough technical detail so that someone skilled in the field could understand and replicate it.
Include every aspect of your invention, from its functionality and technical specifications to any prototypes or working models you have developed. Photographs, diagrams, and schematic drawings are invaluable here, as they visually convey complex ideas more effectively than words alone. If you have user manuals, operational guides, or internal documentation related to the invention, incorporate these as well.
Using the USPTO Patent Center
Filing your PPA electronically through the USPTO Patent Center is the most efficient method. This online portal allows you to submit your application securely and ensures that all your documents are properly formatted and submitted. Before you start, ensure that all your documents are in the Portable Document Format (PDF). The Patent Center provides tools to validate your PDFs, ensuring they meet the USPTO’s requirements, which can save you time and prevent errors that might delay your filing.
When you’re ready to file, log into the Patent Center and follow the prompts to upload your documents. You’ll also need to fill out the provisional cover sheet, which includes basic information about you and your invention. Double-check all entries for accuracy, as any mistakes could lead to delays or complications down the line. After submitting your documents, you will be prompted to pay the filing fee. The fee can be paid online, and once the payment is processed, you will receive a confirmation of your filing.
Filing by Mail
If you prefer or need to file by mail, you can do so by sending your documentation to the Commissioner for Patents at the USPTO. Ensure that you include the written description, drawings, the provisional cover sheet, and the filing fee.
When mailing your application, use a reliable courier service to track your package and confirm delivery, as the USPS can occasionally misplace or delay important mail. Keeping a copy of all your documents and mailing receipts is crucial for your records.
Ensuring Comprehensive Disclosure
One of the strategic keys to a successful PPA is ensuring comprehensive disclosure. Your description should not just cover the basics of how your invention works but delve into the nuances and potential variations of your idea. This includes different embodiments of your invention, alternative materials or methods that could achieve the same result, and any foreseeable modifications that could be made.
This thoroughness helps to establish a solid foundation for your future regular patent application. If you later file a non-provisional patent application, having a detailed PPA can support broader claims and provide stronger protection against competitors who might try to design around your patent.
Timing and Strategic Considerations
Timing is another critical factor. The date you file your PPA establishes your priority date, which is essential in the patent process. File your PPA as soon as you have a complete and detailed description of your invention. This early filing date can be a significant advantage if there is any dispute about who invented the technology first.
However, don’t rush the process to the detriment of quality. Take the time to ensure your application is as detailed and complete as possible. Consulting with a patent attorney can provide invaluable insights and help you avoid common pitfalls. They can review your application, suggest improvements, and ensure that you meet all legal requirements.
Post-Filing Steps
After filing your PPA, you can use the term “patent pending” when discussing your invention. This status can enhance your credibility with potential investors, partners, and customers. Use this time strategically to further develop your invention, conduct market research, and explore commercial opportunities. Collect feedback, refine your product, and prepare for the eventual filing of a regular patent application.
If during this period, you make significant improvements or changes to your invention, consider filing another PPA to cover these new aspects. This ensures that all elements of your innovation are protected and gives you the flexibility to adapt as your product evolves.
Benefits of Filing A Provisional Patent Application
Understanding the advantages of filing for a PPA is an excellent place to start.
Flexibility
It allows you one year to decide whether a patent is proper for you. After filing the provisional application, you will have one year to decide if you want to file a regular patent application.
This allows you to assess the potential commercial value of your invention. If you get “No thanks” from everyone who sees it, it could be that you decide it is not worth spending the thousands or tens of thousands of dollars to prepare a patent application.
No Claim drafting is required
To prevent others from copying your invention, you will stake a claim on it. The placing of these words on an advertisement or at the bottom of your invention assists in indicating that a claim of the invention is in place. This discourages manufacturers from infringing your idea.
You Meet the First To File requirement
You determine the “date and year of the invention.” The U.S. Patent and Trademark Office follows a “first-to-invent” rule. In case of a dispute, the patent is given to the inventor who filed first.
Although not all inventors have the resources to create prototypes and test them, not all inventors record their creations. Therefore, provisional patent applications are often the most cost-effective and quickest way to establish the date. Your rights will begin from the provisional date, even if the patent is granted later.
Cost Savings
Obviously you can save significantly when you prepare and file the provisional application yourself. However, provisional applications should not be taken lightly and you should provide abundant technical details on the operation of the invention. Meeting the requirements of Section 112 can prove critical to future efforts to enforce an issued patent.
If you lack operative details on the invention, “saving money” on a provisional application can, in fact, have a very high price. Thus, you may consider a twin approach of preparing the provisional application and consult with a patent attorney to ensure you have sufficient information in the provisional application
Financial Flexibility and Risk Management
One of the most compelling benefits of a PPA is the financial flexibility it provides. Startups often operate with limited budgets, and the lower cost of a PPA compared to a full patent application allows you to protect your invention without a significant upfront investment. This cost-effective approach enables you to allocate resources more strategically, focusing on product development, marketing, and business growth.
A PPA also acts as a financial risk management tool. By securing a “patent pending” status, you can gauge market interest and investor appetite before committing to the higher costs associated with a full patent application. If your invention does not garner the expected interest or if you encounter significant challenges, you have the option to reassess your strategy without having expended substantial funds on patenting.
Establishing Early Filing Date and Legal Protection
Filing a PPA establishes an early filing date, which can be crucial under the “first-to-file” system. This early filing date can provide a competitive advantage, especially in industries where innovations are rapidly evolving. By securing this date, you create a legal barrier that can prevent competitors from claiming similar inventions. This early protection can be a decisive factor in disputes over patent rights, offering you a stronger position if conflicts arise.
Moreover, the early filing date can be a powerful tool in attracting investors. Showing that you have already taken steps to protect your invention demonstrates foresight and diligence, increasing investor confidence in your startup’s potential.
Enhanced Market Credibility and Business Development
The “patent pending” status conferred by a PPA can significantly enhance your startup’s market credibility. This status signals to potential partners, customers, and investors that you are serious about protecting your intellectual property. It can also act as a deterrent to competitors, discouraging them from attempting to copy or infringe upon your invention.
This credibility can be particularly valuable when negotiating with potential partners or licensees. Having a PPA in place can facilitate discussions and agreements, as it provides a level of assurance that your innovation is protected. It also allows you to market your invention more aggressively, knowing that you have a layer of legal protection.
Time to Refine and Develop Your Invention
A PPA gives you a 12-month window to refine and develop your invention. This period is invaluable for conducting further research and development, gathering user feedback, and making necessary improvements. It allows you to test the commercial viability of your product without the pressure of immediately securing a full patent.
During this time, you can also develop a more comprehensive business strategy. Use this period to explore potential markets, identify target customers, and fine-tune your marketing and sales approaches. This strategic development phase can enhance the overall success of your invention when you eventually file for a full patent.
Flexibility in Filing Strategies
The flexibility offered by a PPA is another significant benefit. If you realize that your invention requires modifications or additional innovations, you can file subsequent PPAs to cover these changes. This approach ensures that all aspects of your invention are protected, providing comprehensive coverage as your product evolves.
Additionally, the PPA allows you to adjust your patenting strategy based on new information or market conditions. If, during the 12-month period, you decide that patenting is not the best course of action, you can pivot your strategy without having committed to the more rigid and costly process of a full patent application.
Strategic Use of Time and Resources
Strategically, the PPA period can be used to build a stronger, more defensible patent application. Take this time to conduct thorough patent searches, understand the competitive landscape, and gather any additional data that might strengthen your claims. Consulting with a patent attorney during this phase can help you refine your application and ensure that it meets all necessary requirements.
Use the PPA period to also engage with potential licensees or buyers. Demonstrating that your invention is protected and “patent pending” can make it more attractive to these parties, potentially leading to early licensing deals or sales that can provide funding for further development.
Caveats with Provisional Patent Applications
The advantages give you the morale to start on your provisional application. However, though, you should know that provisional patent applications may not be a panacea.
Inaccurate/insufficient disclosure
Inaccurate or insufficient disclosure of your invention may substantially reduce your patent protection. For instance, failure to include an element of your invention or fully explain the operation elements subjects your application to rejections when your application is converted into the non-provisional application. Inaccuracies can also include incorrect supporting data and drawings that do not match the written description. This is because the provisional patent application needs to satisfy the legal requirements of “Section 112,” which currently states:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 35 U.S.C. § 112.
Thus, the details in provisional applications should not be taken lightly and should be prepared with a high level of details on how the invention works. Meeting the requirements of Section 112 can prove critical to future efforts to enforce an issued patent.
Changes to the invention
To make changes to an existing provisional patent application, you must file another PPA. You can modify how your invention works or add technical information not covered by the original PPA. If you wish to protect these changes, you will have to file another one.
Conversion to Non-Provisional must be within a year
If you miss the conversion deadline, the result may be fatal, so we suggest working on the non-provisional as soon as financing permits. In many instances, if you miss the one year deadline, you can just simply refile and not rely on your earliest filing date. However, if you make offers of sales or actual disclosures of your invention during the year and fail to timely convert (and thus loses the early priority date), the on-sale bar or the public dissemination of your invention can be used to knock out your subsequent patent. Thus, it is crucial to convert within a year.
Foreign Patents must be filed within a year
You must file foreign patent requests within one calendar year of the provisional application. Failure to file foreign patent protection applications within a year of the date of your provisional application will result in you losing any rights to benefit from your filing date in a foreign country.
Wrapping it up
Filing a Provisional Patent Application (PPA) is a strategic move that can offer significant benefits for startup founders. It provides a cost-effective way to secure an early filing date, offering you the protection and credibility of a “patent pending” status while giving you a crucial 12-month window to refine and develop your invention. This period allows you to gather market feedback, attract investors, and make necessary improvements to your product, all without the immediate financial burden of a full patent application.
The PPA process is also more straightforward and flexible, making it an ideal first step for startups with limited resources. By preparing a comprehensive and detailed application, you lay a strong foundation for your future patent filings, enhancing your ability to defend your intellectual property and maximize the commercial potential of your innovation.
