How to Use "Patent Pending" Status Like a Professional

When you invent, getting "patent pending" status can be very helpful as a potential deterrent to infringers, an indication of credibility, or as a designation of potential value. Getting "patent pending" status also helps you avoid some of the most costly risks such as losing the right to exclusively protect your invention in foreign countries or, in some cases, even in the United States.

Guest Article by Jeff Holman

You can get "patent pending" status as soon as you file a patent application. And the scope of your "patent pending" status is as broad (or narrow) as the level of detail you put in your filed application.

Here’s the problem: it can be tricky to decide how to proceed with patent protection on your invention. On the one hand, filing patent applications can be very expensive, especially if you hire a patent attorney. On the other hand, often your initial invention concept take time and effort to develop into a manufacturable and marketable product. In an ideal world, with unlimited budgets, you could seek incremental patent protection at each of the following stages in your innovation journey:

• Before you begin sharing your idea without confidentiality
• Before you begin selling or offering your invention for sale
• Each time you make a significant improvement to your design
• Before you talk with industry experts or potential licensing deals
• Before approaching manufacturers, even for early prototypes
• Before pitching your business to an investor
• Before sharing your invention in a business competition
• After you finalize the design for commercialization

What’s the practical solution? In a more practical scenario, you might consider the following approach to incrementally protecting your invention:

• File an "outline provisional" with your original concept prior to discussing your invention with initial investors or mentors, or before pitching your idea at a competition event
• File an "incremental provisional" with new details when you make a critical change to the design or function
• If not included in prior versions, file a "landscape provisional" to cover anticipated competitive workarounds prior to discussions with potential customers, distributors, manufacturers, resellers, etc.
• Upon finalizing your commercial product design (but no later than 12 months after you filed your "outline provisional") file a complete non-provisional with all of the details of the prior provisionals and any further details relevant to the final design

If this sounds expensive, it can be, especially if you pay a patent attorney four different times. But it’s probably not a financially sound decision to spend large sums of your product development and market research budget on simply getting patent protection.

What’s the cost-effective solution? Consider drafting and filing your own do-it-yourself (DIY) provisional patent applications for the "outline provisional" and the "incremental provisional." Since the emphasis of the description at these stages is on the technical details of your invention, rather than the legalese, you can cover a lot of ground quickly and inexpensively. Sure, there are potential legal implications with anything you file, but at the initial stages it is much more valuable to get “patent pending” status on the basics of your invention than to either do nothing or incur lots of expense trying to perfect patent protection on your undeveloped ideas.

Consider involving a patent attorney when you want to think more strategically. This might be when you start working on you "landscape provisional" (hopefully you’ve already covered a lot of this in your other filings). Ultimately, when your product development is mostly refined, definitely rely on a patent attorney for the claims and supporting description of your non-provisional patent application, which should build on all the description you provided earlier in your provisionals.

When you stage your patent work like this, you can control your costs more effectively while still achieving effective “patent pending” coverage. As an example, if you DIY your own provisionals and qualify as a micro entity, filing your outline, incremental, and landscape provisionals could cost you as little as $210 total ($70 per provisional at current USPTO fees). Sure, you could save yourself a few hundred dollars by skipping patent protection, but if you’re serious about your invention actually making money in the future—whether through licensing, sale of the patent, or manufacturing and selling your product yourself—you should also be serious about maximizing the value of your invention which almost always corresponds to minimizing risks to your business model (and the business model of your future partners, acquirers, licensees

Where to start? If you're not sure how to DIY your own patent application, here's a resources you should know about: www.provisionalworkshop.com. You can find online resources at affordable prices, or even free for a detailed intro.

If you like online resources plus working in supportive group environment, join the ICON-30™ Challenge (https://provisionalworkshop.com/icon30) starting on July 1, 2020. This challenge gives you access at every level (including the FREE entry) to the workshops and invitations to weekly coaching forums (or more resources depending on challenge level you join).

The ICON-30™ Challenge is sponsored by Intellectual Strategies (www.intellectualstrategies.com). Intellectual Strategies is a law firm focused on supporting innovators and technology ventures with IP and corporate legal counsel. The attorneys at Intellectual Strategies have helped hundreds of startups, as both outside counsel, in-house counsel, and integrated legal counsel.

About the author: Jeff Holman draws from a broad background that spans law, engineering, and business. He is driven to deploy strategic business initiatives that create enterprise value and establish operational efficiencies. Mr. Holman earned his Bachelor of Science in Electrical Engineering and Juris Doctor (JD) from the University of Utah and a Master in Business Administration (MBA) from Brigham Young University. He has practiced patent and intellectual property law in Silicon Valley, built and managed a law firm focused on IP transactions, helped "Shark Tank" inventors with legal and business strategy, and served as general counsel for the leading innovator for consumer electronics waterproofing technology--where he managed engagements with two Fortune 10 customers, provided key legal oversight related to $170 million in equity and debt funding, and oversees global IP strategy. Additionally, Mr. Holman is working with a development team at Intellectual Strategies to launch the first SAAS platform dedicated to IP strategy.