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Renewing Provisional Patents

When you can and when you can't

Many inventors make use of provisional patent applications in order to save money and to "test the waters"  to determine the  market interest in their invention,  and resolve other issues before spending the much larger sum of money required for a non-provisional application.

However, a provisional patent application lasts only  one year.  When it expires it ceases to exist as far as the patent office is concerned.  One very useful thing about a provisional application is that it is not published. 

Thus it cannot be used as prior art against the inventor should the inventor choose to file the same material as a non-provisional application even after the expiration of the provisional.   For that reason some inventors simply renew the  provisional by resubmitting it.  That strategy actually works, except for a couple of caveats that must be taken into account. 

1.  If, while protected by the provisional, the inventor publishes material about the invention or offers it for sale,   that material is now  in the public domain and cannot be part of a patent application.
2.  If someone else makes the same invention during the coverage period of the original provisional application, then that patent application has priority over any patent that might be written drawing on the second provisional
3. Any new non-provisional application will have the "priority date"  of the second provisional.

Thus when clients tell me that their provisional is expiring I tell them that it may be renewed if the conditions of rule 1 are satisfied and I suggest that a mini search of the prior art that was filed during the duration of the provisional. 

 Such a search won't find some patents that have not been published yet but it will certainly find those that surfaced  (were published) during the term of the provisional 

If you need more  help  preparing  your invention  for patenting  or any other  patent issue check us out at www.alacartepatents.com , write us at rblazey@businessmetamorphosis.com or  give us a call at       (585) 520-3539  

Most of our clients with patent(s)  for sale think that there is only one  or maybe two ways to profit from the investment of time and money they made in the patent. Those two ways being an outright sale of all the patent rights, or a patent license which is simply a sale over time.  In both cases the inventor withdraws from the field of business and simply collects revenue (although in the case of a license the inventor may be looking over the shoulder of the buyer to be sure that he gets the royalties that are due him).

It is of course possible for an inventor to form a company to monetize the patent and that method sometimes leads to very large returns if the invention is a major one and the company goes public,  but it's a tremendous amount of work and many people neither have the skill nor interest in starting a company around their inventions.

There is a third way that is not nearly as often used even though it may be very profitable and require only slightly more work on the part of the inventor than a sale or license.

In this case the inventor arranges for other companies to do the functions involved in producing the product but does not create a company to do  any part of the job.  This will work when,  for example, the inventor  can negotiate a major deal with a large retailer and also has access to volume manufacturing (often offshore).  

One a system is setup where large quantities of the product are shipped to the retailer's warehouse  the inventors only task is to collect the revenues from the retailer, pay the manufacturing , shipping  and other costs, and collect the profits.  It is likely that a financial institution can be found to handle these transactions as well leaving the inventor only with the job of collecting a check.  I had heard that this is the business model used by the highly successful company that has manufactured WD-40 for decades.

The big problem with this system is that it often requires a large infusion of money at the beginning to "prime the pump" and fill the pipeline with inventory. There may also be other charges levied by the retailer and other elements of the value chain.  This model also requires long term contracts with major buyers with lots of customers.  But if it works, it's a great system.  If you can pull it off you should consider it.  It's  a great model for consumer products companies with lots of potential buyers.

If you are considering this approach please discuss it with us at  ITTr.       .