Provisional Patents – An Additional Advantage
{Don Debelak’s new book, Turning Your Invention into Cash is now available on Amazon for $3.49. Go to Amazon.com and enter inventions Don Debelak to purchase. From the author of Entrepreneur Magazine’s Bringing Your Product to Market.}
The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to 12 months following the date of first sale, offer for sale, public use, or publication of the invention, whichever occurs first. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)
A filing date will be accorded to a provisional application only when it contains:
- a written description of the invention, complying with all requirements of
35 U.S.C. §112; and - any drawings necessary to understand the invention, complying with
35 U.S.C. §113.
The requirement of a provisional patent specification is:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
No claims are required in a provisional patent which is an enormous advantage. You can put into a provisional patent every possible variation of your idea, even though it might require more than one utility patent, and still have a one year priority period for all the concepts as long as the specification is detailed enough that a person skilled in the art could make and use your invention. So you can put in many ideas. And you don’t have to format your specification in a rigid way. You could send in a copy of your entire inventor’s notebook and as long as a complete description is in the notebook, you could claim priority.
One of the main problems inventors have is they apply for a patent and then through market testing or actual use find out their idea needs to be changed, and that those changes are not covered by their existing patent. First that costs money to do a second patent, but more importantly another person could see your idea and apply for patent of the modified idea before you do, which would not allow you to patent the changed idea.
So the provisional patent allows you to actually receive temporary patent protection in as many variations as possible, so that you don’t have to decide on your final patent configuration. When you apply for a provisional patent include a specification but also include every piece of research, tentative ideas, brochures and any other material you have. This could have a big payoff if you change your design approach to your product.
Check out this page for more information about Patents By Don Debelak: http://patentsbydondebelak.com/patents/.
Brian says
Don,
Thanks for the article.
I would be interested to know your thoughts on this. I filed a provisional patent over a year ago and let it expire. My plan was to shelf the idea but know it is coming back to life. My patent advisor told me that I cannot file for another provisional or utility patent. Since the idea was announced via the provisional and allowed to expire, it is now up for grabs for anyone to take and run with. With that being said, they cannot patent as well. Agree?
Jim Amburgey says
Don
Remember Rubbermaid ? To submit an idea to them you had to have patent pending, I did a provisional, the guy that works for you did a great drawing,it was a animal proof trash container. All of my expenses $500.00. Sent everything to Rubbermaid, to this day I have not heard one word from them. I contacted another trash container company (signed a NDA) thought it was a good idea but needed a prototype, I didn’t have the ability to make one.
Jim
Don Debelak says
Brian,
This may or not be true considering the circumstances. Filing for a provisional patent does not publish your idea. IF you did nothing with your idea, or if you are still less than a year from exposing your idea to the public, you can still file for a utility patent but you won’t get any priority from the provisional patent. If your idea has not been exposed someone else could patent your idea. But if you have publicized your idea, no one else technically can patent your idea but you might need to file an objection to show you exposed the idea prior to their patenting the idea.
So in short, a provisional does not publicize your idea. So you can still file unless you have made the idea public in another way more than a year ago. The inventor has a one year grace period to file a patent. But that grace period only applies to the inventor. If your idea is public, no one else can patent the idea.
Don Debelak says
Jim,
Most companies never reply to submissions and rarely sign NDAs unless they want to license your idea. The reason for this is that they have lots of ideas they have seen, plus many ideas that there engineers and other staff people have developed but have gone nowhere in the organization. So when you send in an idea, the company can’t be sure that they don’t already have this idea, or have seen it somewhere else. By acknowledging your submission, they are entering murky ground if they have already developed the idea, or if they know of it in another way if they in fact decide to introduce the idea. Companies don’t worry about if they have already seen the idea unless they get ready to introduce it. So the easy thing to do is just not acknowledge an idea sent in by an inventor. Companies feel it is too difficult to track down the status of every idea they see. They may only introduce one of 100 or more ideas that they see.
www.bestinversiontable.org says
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Please let me know where you got your theme.
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admin says
Thanks, our theme was custom made. Josh Wallace did all of the art work and you can find his contact information here: http://onestopinventionshop.net/about-us/josh-wallace/