We have written twice in this newsletter about Provisional Patents.  Our August 2011 article defined provisional and their characteristics. Our July 2012 article told how you can renew a provisional (under some circumstances).

Since Provisionals are increasingly in use I thought now would be a good time to talk about what they are good for (and what they are not good for).

Fundamentally a provisional patent is a placeholder.  It buys you time to develop and market your idea without being concerned that someone else will file on your idea before you do, and without breaking the statuary bar on publishing or offering for sale, which will prevent you from ever filing for a patent on your idea. One good thing about provisionals is once you hear from the patent office you can declare your invention "Patent Pending"

But a provisional is not a real patent in that it can't be enforced against infringers and it requires you to file a full (non-provisional) application before it expires.

There are various unscrupulous organizations out there who will offer to get you a patent at a much lower price than an attorney would charge.  Often what they are doing is simply filing useless provisionals which both expire and also may be of little value if you do decide to file a non provisional application later.

When you convert a provisional to a non-provisional, all the material which transfers from one application to the other gets the "priority date" of the provisional application.  So its important to include as much as you know about the idea in the provisional.

While you can file your own provisional for only the patent office charges, its preferable to engage and attorney or agent to do so if you want a quality provisional.  The attorneys and agents I'm familiar with usually charge about half of the price of a full patent application for a provisional.

Any material you add when you file the non-provisional that was not in the provisional will get the filing date of the non-provisional application..

So while provisionals can be useful they need to be used wisely with an understanding of their benefits and weaknesses. To learn more about how to get and use provisionals please contact us.

Many of our clients have only a patent to demonstrate the nature of their invention.   While they may have done some experiments to prove their idea works,  the materials they used and the equipment they built for the patent application, often disappear during the 3 years or more that it takes for a patent to issue.

We once had a client who had invented a new cosmetic that was very appealing.  When we interested a cosmetics company in looking at the invention the first thing they wanted to see was samples of the cosmetic.  Unfortunately the inventor had only made very small quantities which were gone by that time.  The cost to make a new batch would have been in the 10's of thousands of dollars. Which was  money the potential buyer had no desire to invest.

Some clients have inventions that can only be made in very expensive factories (semiconductor inventions are one example).  Usually all the client has is drawings, models and  analyses to prove to a prospective buyer that their idea works.

Buyers also often want information that cannot be established without further work, such as  the manufacturing cost of the finished product.

In the drug business the cost of bringing a new drug to market is now over $2B due to the very high costs of the clinical trials required for FDA approval.  In that industry a process has developed where a new invention only has to go just so far in development before it is sold to a company who is capable of taking it on to the next stage of development.

Even software inventions which can usually be easily prototyped start at an initial Alpha version and then move through successive Beta versions  before a final product design is decided upon.

This means that any client who wants to license their invention needs to know at what stage of development the invention has reached and what company is likely to be interested in it at that stage.  That company may not be the final maker of the product.

Taking drug development as an example , an early stage development can probably not be sold to "big Pharma"  but only to an intermediate developer in the development chain.

This is one of the reasons we ask our clients to fill in the ROTH scoring template as it establishes just how far along an invention has come towards commercialization.

So fill in your free ROTH questionnaire  give us a call and we'll help you get your invention ready to sell.