Deciding to File a Provisional Patent Application

Here's how to decide if you should get a provisional patent application.

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Filing a provisional patent application (PPA) protects your idea and starts the process of getting a patent and making money from your invention. But before you dive into the PPA process, take the time to assess whether filing is right for you. Start by learning about the advantages of filing a PPA. Then, determine whether your invention is likely to get a patent in the long run. Finally, learn how to avoid some common pitfalls with PPAs.   (For an overview of PPAs, read Nolo's article Basics of Provisional Patent Applications.)

Advantages to Filing a Provisional Patent Application

To start, it helps to understand some of the advantages that come with filing for a PPA. Here are the main ones.

It gives you time to decide if a patent makes sense. Once you file the provisional patent application, you have a year before you must file for a regular patent. This gives you time to better assess the commercial potential of your invention. If everybody you show it to says "No thanks," you may decide that pursuing a patent is not worth the potentially thousands, or tens of thousands, of dollars it would take to prepare the patent application.

You stake a claim on your invention. Once you file for the PPA, you may use a "Patent Pending" notice to deter others from copying your invention. Putting those words on the bottom of your invention or in an advertisement sends a message that you've filed an official claim on the invention, which often discourages manufacturers from stealing your idea.

You establish a "filing date." As of March 16, 2013, the U.S. Patent and Trademark Office (USPTO) follows a "first to file" rule. If there is a dispute between you and another inventor, the person with the earliest date of filing gets the patent. Filing a provisional patent application helps to establish an early filing date.

Prepare and file a provisional patent application online, with Nolo’s easy-to-use Online Provisional Patent Application.

Is Your Invention Likely to Get a Patent and Make Money?

Not every invention is patentable. Only about half of the patent applications submitted each year result in a patent. And not every patented invention will make money -- in fact, fewer than 3% of patented inventions ever make money. There's no reason to file a provisional patent application for an invention that will never acquire a patent or earn money, so it makes sense to determine the possible commercial success of your invention before you file.

Ask yourself these seven questions -- and file a provisional patent application only if your answer to all of them is "yes."

1. Is it commercial (that is, will it turn a profit)? In making this determination, consider factors that affect profitability, like production costs, competitors, and the likely demand for the product. You can gather this information by asking people you know or experts in the field.

2. Did you invent it? This may seem like a no-brainer. Nevertheless, you can obtain a patent if you only -- not your uncle or a coworker -- invented something. So, if your late uncle is the person who really thought up and perfected "your" invention, you're not entitled to the patent (although your late uncle's estate can file for it).

3. Do you own it? Your employer might actually own your invention if you were hired specifically for the purpose of creating an invention, if you signed an employment agreement requiring you to give up all rights in advance of creating an invention (commonly referred to as a preinvention assignment), or if you used the employer's resources (materials, supplies, or time) to create the invention (in this situation, your employer can acquire a "shop right").

4. Is it useful? Assuming that your invention does something -- that is, it produces a result or makes a product -- you should have little difficulty establishing usefulness. Aesthetic works --  though they entertain, instruct, or amuse us -- are not considered useful, and are therefore ineligible for patent protection, although they can be protected with copyright. (To learn more about copyright law, see Nolo's Copyright area.)

5. Does it fit in one of the patent "classes"? The five classes are:

  • processes and methods, which are defined as one or more steps for doing or making something
  • machines, which are defined as devices or things that accomplish a result by the interaction of parts
  • articles of manufacture, which are defined as objects that accomplish a result without movable parts (such as a pencil or a garden rake) or objects with movable parts that are incidental (such as a safety pin or folding chair)
  • compositions of matter, which are defined as combinations of materials (like chemicals) that produce a result (naturally occurring things that require extended effort to discover and isolate, such as genes, as well as human-made animals or plants, also fall into this category), and
  • improvements, in which an inventor creates a novel use for an existing invention -- like the inventor who figured out a method of removing prairie dogs from their homes using a powerful vacuum.

6.  Is it novel? Your invention must differ physically or operationally in some way from existing inventions and knowledge -- known to the USPTO as "prior art" -- to be a candidate for a patent.

7.  Is it something that is not obvious to other inventors? To figure out whether your invention meets this test, you have to consider whether people working in the field would consider the invention obvious.

Pitfalls of Provisional Patent Applications

After reading about all of the advantages we've described, you're probably ready to sharpen your pencil and get to work on your provisional patent application. However, provisional patent applications are not a panacea, so before you start, you should be aware of some potentially sticky points.

Inaccuracy will undo your protection. If your provisional application fails to explain how to make and use your invention, you can't count on the protections we've described. Leaving out an element of your invention or failing to explain all of the operating elements could be fatal to your application. Other inaccuracies include using faulty supporting data or drawings that don't match the written description.

You must file a new PPA in order to make modifications. The date of the provisional patent application refers only to what is actually in the application. If you modify the manner in which your invention operates or add any new technical information that was not in the provisional application (known as "new matter"), your original PPA doesn't cover it and you'll have to file a new one if you want to protect the changes. And if you have offered your invention for sale or it has been discussed in publications, those actions may block your ability to file a new patent application on the modifications.

You must file foreign patent applications within a year. You must file patent applications in any country in which you want patent protection within one year of your provisional patent application's filing date. If you fail to file for foreign patent protection within one year of that date, you will lose any right to obtain the benefit of your provisional patent application's filing date in foreign countries.

If you are ready to file for a PPA, you can use  Nolo's Online Provisional Patent Application  right now. It gives you plain-English advice as it takes you step by step through the PPA process. It completes the required government forms, files your application, and sends you the completed PPA with detailed instructions and four essential agreements. To learn more about this service, see  Nolo's Online Provisional Patent Application FAQ.

by: , Attorney

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