Are you Ready to File a Provisional Patent Application?

By Mark Nowotarski
October 25, 2014

If you read the previous article in this series, Why Inventors Should Not Rely On Their Own Search, you know that before you file a provisional patent application, you should do a comprehensive search of the U.S. Patent Office and other U.S. and/or international databases. A patent agent/attorney will do this for their clients, or you can have a trusted confidant, (who won’t take your idea for their own), work with you to complete it.

Prepare yourself, you are very likely to find a similar product, and that is a good thing.

It’s a good thing because it means that someone else has also recognized that there is a problem which requires a solution. Ideally your solution, or some aspect of it, is either better than theirs, or distinctly different, which makes it possible to submit a provisional patent application for it.

At this point, you may think you know what the patentable element is, and are ready to file a provisional, but you’re not there yet, and here’s why.

Your goal in patenting an invention is to make money by turning it into a real product. It won’t do you any good to file a provisional application for something that isn’t in a viable commercial market. If you’re considering filing a provisional, it means that you’re ready to talk to some manufacturers, begin to raise additional capital, and essentially start telling strangers about your idea.

Here’s how the expertise of a patent attorney or patent agent will ease this process for you.

First, you need to be able to describe this idea in enough detail so that someone else can make one, based solely on your description. A good patent attorney/agent will guide you through this process.

Second, you will need to have a conversation with them about the demand for this product in the market. Without tipping your hand to what your invention is to the general public, have you determined that there is a sizeable enough demand that will purchase enough of these items to sustain a business? Before you invest additional funds to find this out and continue down the patent process, it’s in your best interest to have a serious conversation about this.

Third, you need to consider any and all safety issues with your invention. Depending on the type of invention you have, it’s likely that you will need to hire a Safety Engineer before you investigate manufacturing options.

The budget for patent agents/attorneys to file provisional patents can vary from $1,500 to $5,000, but this isn’t a case where you want to shop around for the cheapest price. It’s important to find a professional who prides themselves on submitting comprehensive documentation the first time, increasing the likelihood of getting a patent to issue down the road.

Provisional patent applications allow you to say you are “patent pending”, but they won’t let you stop infringers who can start selling your idea. Subsequently filing a nonprovisional patent application and having it issue as a patent has the “teeth” to do that, and is also necessary if you’re thinking of licensing your invention to a major corporation. More about nonprovisional patent applications in the next article.


Do You Have a New Invention Idea?
CLICK HERE to Submit your Invention. 100% Confidential. No Obligation.

The Author

Mark Nowotarski

Mark Nowotarski is the President of Markets, Patents & Alliances L.L.C. and is a registered U.S. patent agent specializing in business method patents. He currently serves clients in the insurance, financial services, medical devices and manufacturing industries. Mark is an inventor on 17 US patents. He was appointed Corporate Research Fellow for the commercial impact of his inventions. Mark has a Master’s degree in Mechanical Engineering from Stanford and a Bachelor’s degree with honors in Aerospace, Mechanical Sciences and Engineering Physics from Princeton. His academic awards include the Sigma Xi award for most outstanding Mechanical Engineering research at Princeton and the Union Carbide Award for Academic Excellence and Leadership in Mechanical Engineering, also at Princeton. You can connect with Mark through social media by clicking on the icons below.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 28 Comments comments.

  1. Benny October 26, 2014 7:44 am

    “Your goal in patenting an invention is to make money by turning it into a real product”
    No it isn’t. You can do that without a patent, as many manufacturers do. Your goal in patenting an invention is to fence in, or even monopolize, a market share for your product.

  2. Mark Annett October 26, 2014 8:48 am

    While not many people will realize the benefit of an international filing, I always think it is prudent to point out to people that come to me talking about filing a provisional application the potentially hugely expensive impact of filling a provisional if they plan on filing internationally.

    If they file a provisional then one year later then the have to simultaneously file both the US and the PCT, which means they need at least an extra $2500 to file both. However, that is not the big problem.

    The big problem is that instead of having 30 months to file in the individual countries they have now lost 12 already, since it goes to your earliest filing date, and you know only have 18 months before you must file in the individual countries.

    Unfortunately, unless they paid for an accelerated review they will now have to file their application in all the individual countries without having had a single office action here in the US.

    They now have to prosecute their application in multiple countries somewhat simultaneously and not only pay their US representative to review and prepare the response to the foreign office action but they need to pay for translation services as well as the foreign rep to review the response to the foreign action.

    However, if they filed a regular application and skipped the provisional. Then 30 months later they still need to file in the individual contries. however, hopefully, by that time they will have had at least one office action by then and good indication of whether or not they will prevail at all, which right then and there could save them thousands of dollars if they find out they don’t stand a chance.

    However, the real benefit, even if they haven’t finished prosecuting here in the US by the time they have to file in the Individual countries, is that they will still likely finish in time to amend their foreign filings to match their eventually approved US filing and file for accelerated review based upon their positive US response, which will again save them thousands of dollars.

    However, if they waited the year based upon filing the provisional application then they will almost certainly miss those deadlines for the accelerated review.

    People think a provisional application as a cheap route but if they are possibly considering filling internationally it can easily cost them an additional $20k in additional attorney fees based simply on the dual prosecution and I think it is unconscionable not to explain this to them.

  3. Anon October 26, 2014 9:56 am

    Very nice post Mark Annett.

    As to the concept of “why file,” there are many reasons to file, and certainly many ways to monetize an application (even pre-grant). The notion that one must make a product is simply an misnomer (and always has been under US law, as the US system has always embraced the alienability of property and the recognition that inventors can be rewarded for just inventing alone and NOT making any product whatsoever).

  4. Mark Nowotarski October 28, 2014 5:35 pm

    @Benny: I agree that you can turn an invention into a product without a patent. I also agree that the goal of getting a patent is to monopolize a market share for your product. In my experience, however, patents are worthwhile if you need that future limited monopoly right to justify the initial risky investment necessary to make the invention a success. If you don’t need that right then sure, skip the patent.

    @Mark: You’ve anticipated our upcoming article on foreign filings beautifully. Whether you start the process with a provisional or a nonprovisional, that 30 month deadline for foreign filings comes up fast. I guess I’m not too concerned about whether or not we’ve had a first office action on a US case before the foreign filing decision because we’ve usually done a through prior art search. We have found instead that the real driver on a foreign filing decision is how successful the product is. If it’s a valuable product with a growing international market, we’ll find a way to protect it. If not, we’ll help the client make a prudent decision on whether or not it’s worth taking the next step.

    @Anon: By “turning it into a real product” I’m including the option of licensing to a third party and they turn it into a commercial product. The further the inventor can take the product down the road to a full commercialization, the better their chance of licensing.

    @Florence: Yes, outside experts can be a big help in either strengthening your own patents or calling into question the validity of a competitor’s patents. There’s nothing like a fresh set of eyes to spot what others have missed.

  5. Gloria Steinberg October 28, 2014 7:44 pm

    I think it’s also important to consider that provisional patent applications give you a priority date. Also, while filing a well written provisional patent application is important, filing a provisional application will give inventors a year to file a comprehensive nonprovisional patent application that can eventually grant them rights to a patent.

  6. Mark Annett October 29, 2014 8:52 am

    @Mark M: I only do work for independent inventors and startups and I agree with you that if you are working with a company that has the ability to launch a product and market both here and the US and internationally within those 30 months than the decision becomes easy. If we are spending an extra $20k and sales support it then who really cares.

    However, if you are a small startup with a new medical device, just to pick an arena that we are both familiar with then the reality is that you need somewhere between $500K and 1.5M to bring a new medical device to market by the time you pay for engineering, molds, destructive testing to get 510k approval, process validation etc.. Bringing a medical device to market isn’t cheap and many startups simply don’t have that kind of money right off the bat and fund raising takes a lot of time. For instance, even if the startup is able to get for a small business innovation research (SBIR) grants as funding you still might not even have gotten to the point of selling the product yet because of the way the funding cycles work.

    I will tell you that for a self funded startup that extra $25k makes a difference. For example, to respond to the equivalent of an office action in Japan then just for the foreign agent it will cost approximately $3k when to add in $350 per hour for the agent, translation fee – $0.40 per word; and typing fee – $15 per page and then there are also reporting fees and miscellaneous fees for photocopying, postage, etc. The $3K for the foreign agent doesn’t even take into account the $2K that the person will need to pay the US firm to prepare the reply to be sent to the foreign agent to process. So it is now $5K just to keep a whole country in play.

    So when the money is coming out of the inventors own pocket, not from foreign sales, does an extra $5k expense make a difference, you bet it does! The inventor is now forced to make a choice between giving up a whole county or potentially pulling the last of their money out of their 401k.

    The reality is that if they were given better advice then they might not be in this situation at all. The extra $2k for an accelerated review becomes peanuts if you are doing a foreign filing.

    Ps I hope my comments are helpful as you finish your upcoming article and I also want to thank @Anon for the kudos, they were much appreciated!

  7. Mark Nowotarski October 29, 2014 10:58 am

    @Gloria: Yes, that priority date is getting more and more important now that we have crowdfunding and people are making their inventions public before they are manufactured. It’s just too easy for copiers to snatch that idea and get into production with knockoffs.

  8. Mark Nowotarski October 29, 2014 10:59 am

    @Mark A: With all of the great issues you’ve raised, that next article on foreign filings might have to be a series in and of itself 🙂 But to your point, yes, when it’s coming out of your pocket, every $ counts.

  9. Rich October 29, 2014 12:02 pm

    Great comments!

    To maximize the chances of getting the benefit of the provisional application’s filing date, it must have essentially everything a non-provisional has in terms of disclosure except claims (New Railhead case). The effort involved in preparing a good provisional application is probably 75% to 90% of the effort involved in preparing a non-provisional in the first place. Thus, although it does cost a bit more, there are many good reasons for simply going with a non-provisional to start.

    Another alternative avenue that should not be ignored or discounted without consideration is the simple filing of a PCT instead of a provisional or non-provisional. Again, the cost is a bit more, but it preserves rights in the US and the PCT countries and has several benefits: (1) it leaves open the ability to later seek U.S. protection in two ways, as a continuation application or as a national phase entry filing, (2) you can get a search (and preliminary patentability assessment) faster than you will likely get from the U.S. Patent Office (and potentially better than the U.S. Patent Office’s PCT search) so you can make a more informed decision about how to proceed, (3) the examination will typically be conducted under a “unity of invention” standard, reducing the likelihood of forced splitting of the application (and thus multiplied cost) resulting from a restriction requirement, (4) you will also have 30 months (or more) from filing to pursue protection as appropriate, and (5) if the search is favorable, you can get the benefit of the Patent Prosecution Highway (PPH) in various jurisdictions (including the U.S.), which can translate to much faster and cheaper prosecution which can easily save well more than the original nominal increased cost of a PCT application versus a non-provisional.

    While I agree wholeheartedly that every $ counts for a start up, there is also the concept of penny wise and pound foolish, which many, many cash-strapped inventors fail to understand, or ignore. The inventor(s)/company should be talking with their patent attorney from the start about their business plans and intent, so that a proper assessment of the RIGHT approach for their circumstances and budget going forward can be made. Let us not forget that IP protection is simply one business tool that hopefully will contribute to a businesses success, it is not a discrete component of a business in a vacuum nor is it a “necessary evil drag on the bottom line” (which is all too often how it is treated).

    Unfortunately, IP-related decisions are routinely made in a tail wagging the dog fashion by new inventors and start ups based upon investor advice, unrealistic dreams of riches, or immediate available $ without a plan in mind as to how that protection fits in with the particular big picture or, to use an football analogy, how it helps advance the ball towards the inventor(s)/company goal.

  10. Lolly Winne October 29, 2014 6:12 pm

    Firstly, thank you for this awesome website. It is an excellent resource, especially for newbie inventors who don’t have a clue! My question is, if we don’t have the money to bring our invention to fruition ourselves, and we approach 3rd parties, should we get at least a provisional patent to protect ourselves first? Also, if we approach manufacturers in other countries, will the provisional patent protect our idea in those countries? Your response is greatly appreciated! Thanks so much! 🙂

    ~ Lolly

  11. Benny October 30, 2014 3:47 am

    Lolly,
    I would suggest you do a thorough prior art search to ensure that your design doesn’t infringe on someone elses’ patent in force. That’s not something you want to find out after the product is boxed and ready to ship.

  12. Mark Nowotarski October 30, 2014 9:39 am

    Lolly: Building a trusted relationship with a manufacturer or other third party at home or abroad is a whole subject in and of itself. It’s important to build that trust in stages with patents and other forms of intellectual property playing an important role, but not an exclusive role. Once the relationship is established, it can be a tremendous asset but there is a lot more to it than simply “I have a patent. I’m protected.”

  13. jim frazier November 16, 2014 9:39 pm

    I applied for a non-provisional, then a provisional, but did not realize they set fees based on the number of claims. I really only need 1 or 2, probably. But their assessment was too high… so I stopped. Both the provisional and the non-provisional were abandoned.

    I have more money now, and want to start again with a provisional that looks just like a non-provisional, but with just one claim. In the non-provisional, I want to pay for 1 claim only. So, am NOT SURE how they CHARGE for claims… subclaims…etc. And, it’s been almost two years. Can I just start over. Should I refer to the previous filings… or IGNORE them.? Thanks much. Your comments greatly appreciated.

  14. Mark Nowotarski November 17, 2014 8:20 am

    Jim,

    It sounds like you have a fairly complicated situation. Have you talked to a patent agent/attorney?

  15. jim frazier November 17, 2014 11:22 am

    No. Trying to file PRO SE. Everything is done. I never saw any info that they set a fee PER CLAIM.
    That was surprising. So, I just stopped.

    Now, I just want to file a provisional, and get a handleon what the fees will be for a non-provisional.
    And, what is best way to reduce number of claims.
    i only had 3, but each had 2-3 subclaims. I don’t really need all the details. It was very detailed,
    but my whole application was only about 20 pages. So why were the Fees so high? I had
    Micro-Entity status.

  16. Mark Nowotarski November 17, 2014 1:14 pm

    Jim,

    The USPTO has a wonder service to assist pro se inventors called “The Inventors Assistance Center”. http://www.uspto.gov/inventors/iac/

    They can help you sort out the fees and give guidance relative to other procedural issues. They cannot give legal advice, however.

  17. Rich November 17, 2014 1:41 pm

    Jim – the basic fee covers from 1 to 20 claims, of which 1 to 3 can be independent. I don’t understand how, if you had 3 claims, each with 2-3 sub-claims, that would result in excess claim fees. The only way would be through multiple dependent claims, but even there, it is unlikely. Even if you are going to pursue the (ill advised) pro se approach, you should see a patent attorney who can help you figure out what went wrong and why. It may turn out that you are misunderstanding what happened and, if this is the case, you are liable to make the same mistake again. Good luck!

  18. Hemang Shah February 9, 2015 4:36 am

    Mark Annett: Thanks for the informative (and awesome) comments on foreign filing.

    Mark, good article overall

  19. Scott Davis February 19, 2015 6:10 pm

    Mark Annett: Great information! I am curious about this angle from a University perspective. In a University setting, often provisionals are filed for the purpose of protecting a nascent technology prior to publication, and it gives the University a year to then determine if the technology may have legs. However, because the large amount of technologies and the high failure rate of early inventions, it is prudent for the University to almost always file a provisional. However, in my experience, it is commonplace at the end of that year for the University to file both a PCT and a nonprovisional application if the technology will need protection in multiple countries. From what you are saying, it appears there is no advantage to this at all, as the national entry will needed to be determined prior to the first OA. Is this true, or is there some other benefit?

  20. Mark Annett February 19, 2015 11:34 pm

    Thanks for the compliment Scott. 🙂

    To answer you question requires a bit of speculation on my part since I do not do work directly for Universities. But I will try.

    The US allows you to publish first and the file within a year. However, for practical purposes everybody else requires you to file before you publish because if you don’t file first then it belongs to the public.

    So if you want to potentially garner international rights then you must file a provisional, regular utility or a PCT application before you publish.

    A university potentially has lots of potential patents as opposed to a small company that may just be looking at a single patent.

    If the university were to go to the expense of a regular filing for each application they would be spending a lot more money overall, which would likely significantly offset any savings they might achieve on international filings. So it would be a numbers game, even if they realized there was a potential savings with respect to international filings for a particular application they likely wouldn’t care because they save more by allowing patents to die at the provisional phase.

    Once you file a provisional then one year from that date, assuming you also published, then you must file the PCT if you want international coverage. Your initial filing starts the clock running on your PCT application whether or not it is a provisional or a regular application.

    By the way, if you file a PCT and for some reason, you aren’t in a hurry to get your US patent, which most people are, you could actually postpone your US regular filing for 30 months from the date of your provisional.

    If you have a big patent portfolio the universities approach makes sense. If you are a small startup you will likely end up paying several thousand more.

  21. Laurance Draves March 3, 2015 9:14 pm

    This is a great web site, but I do feel a bit overwhelmed. I am underemployed and have no extra money. I have an idea for an electronic game, but don’t have the money or expertise to make it happen. I think I have enough documentation to adequately describe it for programmers and manufacturers to make it and methods for marketing to monetize it in several avenues. I feel that I would have to approach a large game company to make it happen and would rather just outright sell the idea to them. I’ve done all kinds of searches and can’t find anything like it. Would a provisional patent at least give me some protection while I market the idea to one of these companies? Thanks!

  22. Rich March 4, 2015 9:15 am

    Laurance,

    Good for you for educating yourself! First, let me dispel a possible misconception or misunderstanding about terminology. There is no such thing as a provisional patent. There is only a provisional patent application which merely acts as a placeholder and gives you up to a year to take additional steps towards manufacture/marketing of your invention and/or filing an application for a patent.

    It sounds like you have enough information to have a provisional application prepared and filed to buy you that time. You still need some money to at least get the guidance of a competent patent attorney because a poorly prepared provisional (from a legal, not technical perspective) is almost like having none at all. (If you want to educate yourself further, you should search for articles discussing the “New Railhead” case). You need to make sure that you not only have in it all of your technical details, but also include other trivial variations that others might try to do so as to avoid any patent you get but still essentially obtain its benefits. Likewise, you will need guidance regarding things like: avoiding use of absolute terms (like “must,” “critical,” “never,” etc.), using the proper language when differentiating insubstantial aspects from those that make your invention unique, and whether or not to discuss any of the “prior art” (e.g. what you knew about that is similar in some respects to your invention and came before it or have found in your searches) and the legal effect of doing so.

    Note that if a company is interested and has even a hint that you do not have the money for a non-provisional, they may decide to wait out the remainder of the year and then potentially do what you disclosed without you. Thus, you will at least need the patent attorney to prepare a good non-disclosure and non-use agreement for you to have them sign BEFORE you make any disclosure to them. In addition, you should understand that many companies will not sign any form of non-disclosure agreement, in which case you may find yourself in a “Catch-22” until you can muster up the funds to get a good non-provisional patent application on file.

    In general, when I hear of others in a situation similar to yours, I suggest that they consider approaching friends/family (even your current employer) to get the funds to skip the provisional and get a proper non-provisional prepared and filed in return for a share of any proceeds.

    Sometimes that works, sometimes it doesn’t.

    Finally, if you succeed in that approach, everyone must understand that a patent is just a tool and that few patents generate any revenue at all. If the game will be successful on its own, a patent will provide some level of protection against competition. If the game cannot sell, a patent will likely be of little independent value.

    Good luck!

  23. Laurance J Draves March 4, 2015 11:46 am

    Thank you for your quick reply. I was reading the article on PTO releases abstract idea hypotheticals with examples of patent eligible claims and will have to rethink how I approach the patent. The good news is that there is a somewhat similar application for provisional patent that I found that at least makes me think that my idea would take things to a whole new level. I also may have a way to get some cash over the next few months. Does your company represent people in Indiana or can you recommend one in Indiana? I purchased the Invent + Patent System and am using that to help get as much done up front as possible.

  24. Rich Straussman March 4, 2015 12:11 pm

    Laurance,

    You are most welcome. Given that there is a “somewhat similar provisional” you really need to talk with a patent attorney to figure out what the potential scope of a patent you could get and whether it is worth the expense at all.

    I represent people and companies from all over the U.S. as well as overseas, with patent application drafting and prosecution, geography does not matter provided the person is a registered patent attorney or patent agent. The more important thing is that you are comfortable working with them, their background and expertise because you are entrusting something of great value to you with them.

    I am not familiar with the “Invent + Patent System” so I have no idea what it does or its limitations.

    You can privately e-mail me at rstraussman@weitzmanip.com if you like and we can discuss this further.

  25. anon March 5, 2015 11:44 am

    Laurence,

    I think you also need to realistically assess what you have. If it is an abstract idea in its current form, then of course it cannot be patented. If you have reduced some of it to practice in a tangible way, what are the patentable aspects? Can you copyright the game mechanics? This is probably another avenue you want to explore in conjunction with filing a patent. How long will it take a company to implement your invention into a sellable product? If this is an electronic game that will take many programmers many days to implement, you will get little- to nothing for your idea.

    Another perspective from Rich. I usually have my inventors go the provisional route, but make sure it is a good provisional, not just a simple “cover sheet” provisional that is worth nothing. You get what you pay for…Good luck!

  26. Mark Annett March 5, 2015 12:39 pm

    Laurence,

    When you say electronic game, that is incredible broad.

    If you are talking about a game that falls under the traditional umbrella of the toy industry, then they are likely not interested in talking to you, regardless of whether or not you have a patent.

    In the toy industry they often don’t care about patents since most toys only have one year of life and those that last longer the brand is important but that is not your real problem.

    For the toy industry, if you are an outsider then in order to get in the door, you typically need to work through a toy agent and the going rate for a toy agent is 50% commission. (Better 50% of something than 100% of nothing).

    The point being is you should spend time learning about your industry and learning what it is that you need to do in order to potentially sell/license it to them.

  27. Laurance Draves March 5, 2015 1:13 pm

    I appreciate some of the comments and feedback I have received. My idea is much more involved than a simple toy or electronic game and will most likely involve two patents or something that will break down into two different ideas. I am in contact with Richard and will be thoroughly investigating this. I have several contacts in the video gaming industry and want to protect myself the best I can before making contact. Wish me luck!

  28. sony a7 ii flickr April 22, 2015 11:42 pm

    By ditching the internal reflective mirror these cameras become capable to offer what-you-see-is-what-you-get viewfinder.
    It combines the ease of use of a point-and-shoot
    camera with the versatility and quality of a d – SLR.
    Fujifilm launched the X100 in the first half of the year
    to general astonishment and admiration.