Posts Tagged: "provisional patent application"

RUSS KRAJEC: Getting a patent is not the end goal. Using an issued patent is not the end goal. It’s the beginning for the startup. Think about how you are going to use this asset in your business, and then craft that asset to match that business goal. When you do that, you make much better use of your time and energy. So many people who are looking for a paper trophy or a plaque on the wall, and they don’t understand what they’re going do when this asset shows up, and if that’s the case, why bother doing it?

One big problem independent inventors face when they choose to represent themselves is with respect to the very real problem of admissions. Truthfully, those who are representing themselves should be given patent-style Miranda warnings before they file a patent application or say anything during the prosecution of a pending patent application… Another problem is with respect to not wanting their patent applications to be “too specific” and, therefore, keeping everything very general. If you are afraid to be specific in a patent application you really shouldn’t be seeking a patent in the first place.

The challenge when you are filing a patent application is you don’t know if the invention will become the next billion dollar drug. As you can imagine, if a patent which is relying on a provisional patent application does serve as the basis for a successful product, the provisional application will then be closely reviewed. In other words if you a claiming priority to the provisional patent application and the the provisional was submitted without much due diligence then you are in a bit of trouble!

It is important to understand what a provisional patent application is, what benefits are provided and perhaps most importantly what a provisional patent application is not. First and foremost, there is no such thing as a provisional patent. It is absolutely critical to understand that a provisional application will never mature into an issued patent! Ultimately, if you are going to want to obtain a patent you will need to file a non-provisional patent application. Thus, a provisional patent application is best viewed as an economical first step on the path to a patent.

The best mode requirement still exists, although the America Invents Act (AIA) has largely removed any consequences for failing to disclose the inventor’s best mode, which means the current state of the law is at best a bit murky. But why would you ever want to file a patent application that does not disclose something that you prefer or regard as better? The goal of filing a patent application has to be to completely disclose your invention with as much detail and description as possible, paying particular attention to alternatives and variations. So while you may be able to get away with not disclosing any preferences doing so would likely be a tragic mistake.

The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for patent applications, or more specifically for patent claims. This is true because patent claims must particularly pointing out and distinctly claiming the subject matter invented. Therefore, the use of relative terminology in patent claims should be carefully considered. Traps do await the unwary.

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates to deliver the functionality being described. Many inventors also make the mistake of only very generally describing their invention. If that is you then you are already light on specifics, which is extremely dangerous in and of itself. But the other problem I want to discuss is the flip side of the coin. It is important to be specific, but not just specific.

In short, a concise description of an invention is an inadequate description of an invention, period. The goal has to be to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover. Even knowing what the legal standard is for the description that must be present in a patent application does not ensure that those without training will be able to satisfy the requirement. The blame for this goes to the way most people describe things as they engage in ordinary, everyday communications.

One excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternatives is to have many professional patent drawings. You should then describe what each drawing shows. The quickest way to explain what you want to do is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice that this is a very general overview of how the bones in the body are connected. This is a good first step, but there is a lot more that can and should be written.

As Key works with inventors he coaches, who he refers to as students because he teaches them how to do much of the work for themselves, he explained that increasingly he is seeing interest on the part of companies in licensing inventions without a patent attached to the product. ”What we have noticed is that companies say they care about patents, but the bottom line is really about speed to market and how fast they are going to be able to sell them,” Key explained. ”The life cycle for products is so short.”

Generally speaking the first step toward commercializing an invention and making money is typically to pursue the patent path. For those new to the industry it is important to understand that on the road to a patent there are many mistakes that inventors can make unwittingly, some of which will ultimately make it impossible to obtain a patent. With that in mind, here is a list of the top 5 mistakes inventors make, followed by discussion of what you should do to move your project forward in an appropriate and responsible way.

If you are going to file a patent application you must have drawings to include in the application, but patent drawings are not the only type of “drawings” that an inventor should be considering. Patent drawings are wonderful for a patent application, but they don’t always do the invention justice if you are trying to capture the attention of a prospective licensee, or if you are trying to convince a buyer to place orders or sell the invention in their store. Patent drawings and other types of invention drawings, such as 3D renderings and photo realistic virtual prototypes serve different purposes.

When setting out on a new endeavor it is not wise to pursue a path to the end and then ask whether what you did was correct. You should seek help along the way to make sure you are doing what is required. Otherwise you are likely to get to a point where the most economical solution is simply to start over.

”Even a startup with strained resources can afford to file provisional applications. As a result of the American Invents Act and the fact that the United States is now a first inventor to file country, it is advisable for any company to file provisional applications as soon as they have a meaningful invention and have the ability to put it down in an application and file it. So, that would be the most important advice I can give.”