What to File in a Provisional Patent Application (and When)

Why a Bogus Provisional May Be OK.

Let's start with a disclaimer. I am not a patent attorney or agent and am not offering legal advice. The thoughts below are based on my 30+ years of experience as a new product developer and should be considered as my own personal opinions. Some (perhaps many) registered patent attorneys and agents may disagree with what I have to say, but so far, while not endorsing my ideas, not one patent attorney or agent has told me I'm wrong.

A provisional patent application (PPA) is a reservation on a real patent and the reservation expires after one year. The idea is that I can have a bit of protection while I check out whether or not I'm serious about my invention. A PPA costs far less than a real patent (you can file one yourself for less than $100 versus the $5-10,000 common for filing a real patent). It's similar to a restaurant reservation - the reservation gives me the right to buy a meal ahead of someone else, but doesn't give me the actual meal (the formal definition of a PPA from the US Patent and Trademark Office appears at the bottom of this article).

What kind of protection does a PPA actually give me? It depends on how far I've developed my invention idea and how much effort and/or expense I put into it. A PPA on a detailed invention concept, written with the same care as a non-provisional patent, can have real value, especially in a fast moving industry. For example, around 2001, my brother and I filed a non-provisional patent on an "Audio Internet navigation system" that essentially covered the concept of Pandora (and more). We went back and forth with the patent examiner but decided to give up when he found a patent application on the same concept from Motorola, filed just one month ahead of ours. Timing can matter a lot (had we filed a provisional patent application ahead of the non-provisional, we would have beaten Motorola by 3+ months).

Outside of today's tech and biomedical fields, things move much more slowly and the issue of being first to file is less critical than having at least a possible claim to protection before you disclose your concept to potential licensees, partners and competitors. In this case, a "Bogus PPA" can be almost as valuable as a real patent application.

Bogus PPA is obviously not a legal term. It's my own term for a PPA that discloses an idea in such a general way that it has zero value in establishing a priority date. A priority date only has meaning for something that is eventually claimed in an issued patent. Issued patent claims depend on details and typically, at its earliest stages, the details of an invention aren't known. Details mean prototyping and engineering, things that cost time and money.

For example, let's say I have an idea for a non-lethal mousetrap that catches the mouse and catapults it out of the house. I have pictures of the idea, but haven't figured out details such as how to position the mouse on the catapult before it fires or what kind of spring system to use. I can file a PPA with the images of my mousetrap-catapult and a summary description, but without details, the PPA will probably not establish a useful priority date.

However, the PPA, even if it is only a piece of paper with the words, "Mouse Trap Catapult" (it can be that simple) DOES give me the right to claim "patent pending" AND NO ONE KNOWS WHAT I FILED. My PPA might be filled with details and images of patentable features or it could just be a piece of paper with three words. No one knows!

A patent can only be enforced after it issues. The point of telling someone that an invention is patent pending is to warn them that a patent may issue in the future. If they knock me off while my patent is pending, they could lose their investment and hurt their business after the patent issues. The POSSIBILITY that my pending patent MIGHT have meaningful claims that will issue in a real patent serves as a deterrent. It's like being in a poker game and deciding whether or not to call someone's bluff. All you can see are the backs of the cards. The cards could be a full house or a pair of twos.

A Bogus PPA gives me the same right to claim "patent pending" as fully detailed PPA or even a non-provisional ("real") patent application. I can spend less than $100 and file three words for a PPA on my own or spend $5000+ with a patent attorney on a real patent application, and my invention is "patent pending" either way.

How might I use a Bogus PPA? I believe strongly in the value of surveys and in talking to potential licensees to confirm the market before making a serious investment. So, with SOME inventions (only some, I'll never tell which ones and woe unto those who test me on this), I might file a Bogus PPA just so I can say "patent pending" when disclosing an invention idea in a survey or to a possible licensee. If the idea gets a positive response I can then quickly develop the concept further and file a PPA with meaningful details (I can file multiple PPAs on the same idea) or even a full non-provisional patent application with claims.

The reason for doing things this way? To save time and money. In some cases it's worth spending the time and money to do things right. Other times, it's worth taking the risk and I can use a Bogus PPA to give me an aura of protection so I can confirm the market before spending real money. There's no one size fits all rule. A Bogus PPA is just one more tool.

Summary

Provisional Patent Application ("PPA"):

  • Gives the right to say "patent pending" for one year.
  • Can be a detailed disclosure with drawings or just a few words.
  • Provides a one year option to establish a priority date for my invention. The priority date only has value if/when claims based on details disclosed in the PPA issue in a real patent. A real patent application must be filed within the year to maintain the priority date of the related PPA.
  • Multiple PPAs can be filed on the same concept. Each PPA establishes a priority date for the new material disclosed.

Non-Provisional Patent Application ("real"):

  • Gives the right to say "patent pending" for multiple years, until the application is either allowed and issues or receives a final rejection and is abandoned.
  • Leads to a published patent application that I can show as proof of having filed a real patent (often useful in licensing negotiations).
  • Includes claims (the things a patent actually protects) that are reviewed by a patent examiner
  • Provides a path toward an issued real patent with claims that can be enforced.

Invention City links for more patent info:

*Here's the formal description of a PPA from the USPTO itself:

"A provisional patent application (PPA) is a patent application that can be used by a patent applicant to secure a filing date while avoiding the costs associated with the filing and prosecution of a non-provisional patent application. More specifically, if a non-provisional application is filed within one year from the filing date of a PPA, the non-provisional application may claim the benefit of the filing date of the PPA... Because a PPA is not examined, an applicant can also avoid the costs typically associated with non-provisional patent prosecution (certain attorney's fees, for example) for a year while determining whether his/her invention is commercially viable."

Comment? Please send it to "mike @ inventioncity.com" and I'll add it here:


- Mike Marks

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