Introduction

"You don't get up in the morning and say I'm going to invent something. It doesn't work like that. What might happen is you might trip over the carpet. And you think to yourself, 'I'll go and nail the carpet down.' And as you walk into your workshop, you think, 'I haven't finished paying for the carpet yet so I can't put nails through it. So, suppose I screw to the edge of the deck, a piece of plastic that would hold the carpet down. Then it could look neat and stop me from tripping over the carpet.' That's how an invention comes about."

-- Trevor Bayliss (inventor of the Freeplay radio), interview on Todd Mundt Radio Show, February 8, 2001

Congratulations -- you invented something! So what's next? If you're like most inventors, your first concern is to make sure nobody can steal your great idea.

There used to be only one foolproof way to put the world on notice that you claimed ownership of an invention: filing a patent application. Getting a patent gives you the right to prevent others from making, using, or selling your invention for a limited period of time. But this protection comes at a price: You can expect to spend anywhere from $5,000 to $10,000 or more to file a patent application through an attorney. And because fewer than 3% of all patented inventions ever make any money, you might never see a return on your investment. This puts some inventors in a bind: If they don't file for a patent right away, someone else might steal their idea. But if they file too soon, they risk spending money on legal protection for an invention that may not be commercial.

Wouldn't it be great if there was an inexpensive way to establish an official claim to your invention before filing for a patent -- so you could figure out whether your invention would turn a profit before you pay to protect it? Well, there is -- the provisional patent application.

In this chapter we'll explain the benefits -- and the disadvantages -- of filing a provisional patent application. To give you an idea of what a provisional patent application looks like, we've also included two examples in the last section of this chapter, one based on William Lear's car radio, and the other based on Louis Pasteur's process for improving beer and ale (later to be known as "pasteurization").

After reading this book, you may decide that the provisional patent application is not for you. You may determine that your invention lacks commercial potential or is not patentable. Regardless of whether you ultimately file a provisional patent application, this book will help you see your invention in a wider context -- in relation to patent law, licensing opportunities, and other inventions within your field -- rather than just as an isolated creation on your workbench.

How a Provisional Patent Application Works

In 1995, President Clinton signed a law that allows inventors to file a provisional patent application. This process offers an effective, fast, and cheap way to safeguard your place in line at the United States Patent and Trademark Office (USPTO) for up to one year until you file a regular patent application.

A provisional patent application consists of text and drawings that describe how to make and use your invention. It's a short document -- often five to ten pages -- written in plain English, with none of the arcane language used in regular patent applications. In fact, if you've written a technical article that accurately describes how to make and use your invention, you can submit that as part of your application. You do not need to hire a draftsperson to prepare formal drawings; you can furnish informal drawings as long as they -- in conjunction with your written statement -- show how to make and use your invention. You can either send your description, drawings, a return post-card, and a cover sheet and fee transmittal form to the USPTO by USPS Express mail (along with the $100 fee), or you can transmit the materials electronically (as we'll explain in Chapter 6). Once this is done, you have established an effective filing date for your invention and you can use the term "patent pending" on your invention -- at least for 12 months from the filing date.

A provisional patent application will not, by itself, get you a patent. In order to patent your invention and obtain some of the benefits listed above, you must file a regular patent application -- a more complex document -- and the patent must be approved by the United States Patent and Trademark Office. The provisional patent application is a simple, inexpensive strategy for preserving your rights while you decide whether to file for a regular patent. But if you want that patent, you will have to file a regular application within a year after you file your provisional application.

Patent It Yourself. Some readers may find it helpful to use David Pressman's Patent It Yourself (Nolo) as a companion resource while using this book to prepare your provisional patent application. Patent It Yourself provides in-depth instructions for preparing provisional and regular patent applications as well as extensive information on topics such as commercializing your invention, drafting patent claims, and corresponding with the USPTO.

Advantages of Filing a Provisional Patent Application

Filing a provisional patent application confers a number of benefits:

• you can take up to a year to assess whether your invention will sell before committing to the higher cost of filing and prosecuting (the official term for "pursuing") a regular application for a patent
• you can use a "Patent Pending" notice to deter others from copying your invention
• you can avoid building and testing your invention
• you establish an official United States patent application filing date for the invention
• your application is preserved in confidence,
• and the expiration date of your patent is extended, if the USPTO later approves your application.

We discuss each of these benefits in detail in the sections that follow.

Assess the Commercial Potential of Your Invention Before Filing for a Patent

Alexander Graham Bell almost didn't get the patent for the telephone. On the day that he filed his patent application, a rival inventor, Elisha Gray, filed for the same invention. Historians attribute Bell's victory at the USPTO to several factors (see Appendix A), the most important of which was that Gray never bothered to fight for the patent. Gray, a businessman, didn't believe that the telephone had any commercial potential and filed his patent documents as an afterthought. He believed (as did his business partners and attorneys) that the telephone was a novelty not worth pursuing.

Gray and his attorneys were wrong about the commercial potential of the telephone (as was Western Union, which turned down an opportunity to buy Bell's patent for $100,000). Two years later, when the patent's value became clear, Western Union backed Gray in an unsuccessful lawsuit to terminate the Bell patent.

But it's unfair to judge Gray harshly in hindsight. Determining the commercial potential of an invention can be difficult -- sometimes even impossible -- until you've actually tried to sell it.

Considering that fewer than 3% of all patents ever make money, the vast majority of inventors probably shouldn't bother with the time and expense of filing a patent application. Unfortunately, there's no accurate way to predict whether any invention will fall into that lucky 3%. What if the invention is a commercial success but no patent protects it from being stolen by others? Inventors dutifully prepare and file patent applications as insurance against this possibility.

Once you file the provisional patent application, you will have almost a year to assess the commercial potential of your invention before you have to prepare a patent application. Although 11 or so months may not give you enough time to obtain a firm commitment from a manufacturer or distributor -- many companies take months, if not years, to make such decisions -- it should be enough time to make a preliminary assessment about commercial potential. If everybody you've shown it to says "no thanks" and backs away from you slowly, there's probably no reason to bother filing a regular patent application. In that case, you will lose your $100 filing fee -- but you will save the hundreds, maybe thousands of dollars you would have spent preparing the patent application.

Use a "Patent Pending" Notice to Warn Potential Thieves

There's a certain cachet to labeling your invention "patent pending" or "patent applied for." 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. This marking often deters manufacturers from stealing your invention -- they do not want to pay for creating tooling or molds to produce the invention if they know you may get a patent for it.

In Alexander Graham Bell's day, the only way you could claim "patent pending" status was to pay an attorney to prepare and file a regular patent application. Nowadays, you can use the label once you have filed a provisional patent application. (Using the terms "patent pending" or "patent applied for" without filing an application is a criminal offense.)

Keep in mind that marking your invention "patent pending" doesn't give you any patent rights. You cannot stop anyone from copying, selling, or using your invention during this period. Patent rights do not kick in until after your regular patent application is approved. The label simply lets the world know that you have staked a patent claim and are waiting for the patent to issue. As we explain in "Preserve Your Application in Confidence," below, under certain circumstances -- if you file a regular patent application that is published by the USPTO before the patent is granted -- you may be able to sue for damages during part of the pendency period.

Provide an Alternative to Building and Testing Your Invention

The U.S. follows a "first to invent" rule. if there is a dispute between you and another inventor, the person with the earliest "date of invention" gets the patent. The patent laws establish your date of invention as either:

• the date when you "reduced your invention to practice" -- that is, the date on which you could prove that it actually works (we'll explain below), or
• the date you conceived of your invention, provided that you diligently reduced it to practice soon after (see "Turning on the Lightbulb: Documenting Conception," below).

You have reduced your invention to practice once you can demonstrate that it works. The USPTO accepts any of three dates as the date of reduction to practice:

• the date you actually finished building and testing your invention
• the date you filed a regular patent application, or
• the date you filed a provisional patent application.

The key to beating out rival inventors who claim priority is to act quickly, before they can claim the prize. Once you conceive of an invention, make a record of it as described in "Hurdle #2," in Chapter 2. Having a brilliant idea is not enough -- you have to document and pursue your idea to protect your ownership rights.

EXAMPLE: Alphonse Eugene Beau de Rochas conceived of the four-stroke internal combustion engine in 1862. But the patent went to Nikolaus Otto, who improved on the concept and was the first person to successfully build and test a working model of a four-stroke engine in 1876. De Rochas conceived of the engine but Otto conceived of an important improvement -- and reduced the engine to practice.

The earlier you can build and test your invention, the better -- that guarantees you the earliest date of invention (provided of course that your proof is documented and witnessed). But not all inventors can afford to create working prototypes and build and test their inventions. And not all inventors are diligent about maintaining witnessed notebooks to evidence the date of conception. Even if you believe your notebooks provide adequate documentation, a court may later disagree.

EXAMPLE: An inventor filed a patent application for a biotech invention known as a fusion protein. The application was filed three months after a similar application. When a dispute arose, the inventor who filed later tried to prove he had reduced his invention to practice first, using his lab notebooks and witness testimony as evidence. A federal court of appeals ruled that his evidence was inconclusive because it failed to show that he had completed every step required to complete the fusion protein. Schendel v. Curtis, 83 F.3d 1399,(Fed. Cir. 1996).

You may be certain that your invention will work even if you haven't perfected your prototype. For example, although Alexander Graham Bell had transmitted tones through wires, he had not transmitted speech. At the time he received his patent for the telephone in 1876. (The famous "Come here Watson, I want you" conversation didn't happen until a month later, when Bell built a working model.) Even the Wright Brothers had not flown when they applied for their groundbreaking aeronautical patents. Their famed Kitty Hawk adventure occurred nine months later, on March 23, 1903.

Fortunately, there's an easier way to prove reduction to practice than building a prototype. It's known as "constructive reduction to practice," and you accomplish it by simply filing a provisional patent application (or a regular patent application). If you do a constructive reduction to practice, your date of invention is the date you filed your provisional patent application. In other words, if you can't build and test your invention, you can still establish your date of invention without spending the time and money required to file a regular patent application.

There is a potential downside to using the provisional patent application for constructive reduction to practice as described above. Without a working prototype, you may not be able to convince others to license and manufacture your invention. If you really want to market your invention, you will probably have to create a prototype eventually.

Even if you've already built and tested a working model of your invention, you can still file a provisional patent application to claim the other benefits described in this chapter (or you can file a regular patent application to obtain the patent).

If you intend to prove your date of conception, you will have to do better than Thomas Edison. You must provide accurate documentation of the conception of your idea. If you fail to do so, your date of invention will be either the date you actually reduce your invention to practice or the date you constructively reduce it to practice -- that is, the date on which you file a provisional or regular patent application.

You can accomplish proper documentation of conception by using an inventor's notebook (see Chapter 2) or by filing a signed disclosure document under the USPTO's Disclosure Document Program.

Establish an Official United States Patent Application Filing Date for Your Invention

Filing a provisional patent application gives you an official patent filing date. As explained above, the USPTO awards patents to the first to invent, not the first to file a patent application. But don't let this rule lull you into complacency -- if you want a patent, you should get to the patent office as early as possible. According to many patent experts, the first person to file at the USPTO will often win the battle over who was first to invent something (known as "priority").

If you know that a description of your invention will be published or displayed, or if you plan on selling or using your invention, you can preserve your patent rights by filing a provisional patent application within a year of that public disclosure or sale.

EXAMPLE: Bob built and tested a mobile telephone switching system. He plans on first publishing a description of his invention in the Journal of Mobile Telephony on February 20, 2007. In the old days (before 1995), Bob would have had to file his patent application by February 19, 2008 -- within one year of his public disclosure. Instead, he files a provisional patent application on February 19, 2008. He then waits another year and files his regular patent application on February 18, 2009. Effectively, Bob can squeeze in two years of test sales and still preserve his filing date of February 19, 2008.

The filing date is also important for another reason. If your patent later issues, it becomes part of the prior art against which other patent applications are judged. The date your invention becomes prior art (known as the "102(e) date" because it references 35 U.S.C. § 102(e) of the patent law) is the date you filed your provisional patent application. Other inventors who try to patent the same invention must prove that they invented their creation before the 102(e) date of your invention.

EXAMPLE: Bob files a provisional patent application on February 19, 2006. He then waits a year and files his regular patent application on February 18, 2007. The USPTO later issues him a patent. Sam is testing a mobile telephone switching system identical to Bob's invention but he doesn't finish building or testing his invention until March 1, 2006. Bob's provisional patent application will be considered prior art and can be used to block Sam's application.

The filing date works in connection with your date of invention and your date of disclosure. The provisional patent application operates defensively with both dates by giving you more time to file a regular patent application following public disclosures. It also operates offensively by preventing other inventors from arguing that they came up with the same idea before you filed your provisional patent application. In Chapters 2 and 3, we talk more about the effect of prior art on patent applications.

Preserve Your Application in Confidence

If you're like most inventors, you have a secretive streak. And that makes sense -- after all, if word got out about your invention, somebody else might claim rights or instigate a dispute at the USPTO. Because of this, most inventors won't disclose anything about their inventions, except under the terms of a signed nondisclosure agreement. (We provide suggestions for a nondisclosure agreement in appendix B to this book.)

The provisional patent application guards your secrecy while preserving your rights at the USPTO. Nobody at the USPTO will read your provisional patent application unless (1) you file a regular application within 12 months, and (2) a dispute arises as to your rights. Otherwise, the provisional patent application will sit safely tucked away in a file cabinet.

If you file a regular patent application, the USPTO will treat that application with secrecy for the first 18 months of the examining process. Approximately 18 months after you file your regular patent application, the USPTO will publish your application (unless you requested nonpublication at the time you filed). Publication can be a good thing. It paves the way for you to sue later (after you get your patent) for infringements that occurred after the patent is published. On the other hand, it can be a bad thing if your secrets are released, but your patent isn't granted.

Extend the Expiration Date of Any Patent That Later Issues

Your patent expires 20 years after the date you file your regular patent application. However, you don't get 20 years of patent rights. Because the USPTO takes approximately 12 to 24 months to complete the examination and because you don't get any rights until the patent actually issues, most patent owners will have only 17 to 18 years of patent rights. That's unfortunate because many inventions enjoy their best commercial returns during the final years of the patent.

Filing a provisional patent application can stop the clock for at least a year on patent examination. Your 20-year term starts from the date you file your regular patent application, not your provisional patent application. So your patent rights, if the patent issues, end one year later than they would have if you filed a regular patent application instead of a provisional.

EXAMPLE: Loren files a regular patent application on March 1, 2007. If her application is approved, the patent will expire on March 1, 2027. If Loren files a provisional patent application for her invention on March 1, 2007 and then waits a year to file her regular patent application, the resulting patent will expire on March 1, 2028.

Advantages for Foreign Applicants

Inventors living outside the U.S. can also benefit from filing a provisional patent application. Here's why:

• Unlike a regular patent application (that must be filed in English), a provisional patent application can be filed in any language.
• Like their U.S. counterparts, the foreign inventor can obtain the earliest possible prior-art date -- the date against which competing patent applications will be judged.
• If the foreign inventor files the provisional patent application and the home country patent application at the same time, the foreign inventor -- like the U.S. inventor -- can preserve ownership rights in the U.S. and extend the life of the U.S. patent, as discussed in the previous section.

Potential Disadvantages of Filing a Provisional Application

After reading about all of the advantages we've described, you're probably ready to sharpen your pencil and get down to work on your provisional patent application. But before you do, there are some potential drawbacks you should be aware of.

Inaccuracy Will Undo Your Protection

If your provisional application fails to explain how to make and use your invention, you can't count on it for any of the purposes described in this chapter -- for example, an early filing date, proof of invention, or a constructive reduction to practice. Leaving out an element of your invention or failing to explain all of the operating elements could be fatal inaccuracies. Other inaccuracies include using faulty supporting data or drawings that don't match the written description. Deliberate inaccuracies will also destroy your patent hopes -- for example, if you are not the true inventor or you filed even though you knew the invention did not qualify for a patent.

Modifications Require a New Provisional 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"), you cannot rely on the date of the provisional patent application for such new matter. You can file a new provisional application that reflects these changes. Adding, subtracting, modifying parts, or changing the structure or operation of the parts would all qualify as modifications. You will not be able to rely on your provisional patent application date for these new developments.

You Must File Foreign Patent Applications Within a Year

You must file patent applications in any country in which you seek 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 miss the one-year deadline, you can still file in foreign countries -- provided you have not sold, publicly used, or published your invention before the foreign filing date. This could be a problem if, during the period between your U.S. and foreign filing, someone else filed for a similar invention. Since the U.S. accounts for one-quarter to one-third of all sales for most patented inventions, many inventors are not interested in pursuing foreign patent rights. However, if you think that a foreign manufacturer may want licensing rights, it's generally a good idea to preserve your foreign patent rights. We discuss foreign patents in more detail in Chapter 6.

Preparing Your Provisional Patent Application

Believe it or not, you really can get your provisional patent application on file within 24 hours, as promised in the title of this book. But your overriding concern should not be speed; it should be accuracy. How fast you prepare and file your provisional patent application will depend on your knowledge of patent law, your familiarity with inventions similar to yours, and your ability to accurately describe your invention.

In order to properly prepare a provisional patent application, you will have to:

• learn some patent law basics
• learn about the prior art associated with your invention, and
• accurately describe how to make and use your invention.

That's a tall order and we've only got about 23 hours left, so we'd better get started. But before we do, here are examples of provisional patent applications for two historic inventions. We made these up to give you a sense of what a provisional application should look like.

Drinking Beer and Listening to the Car Radio: Two Provisional Patent Applications

If you like drinking beer or listening to the car radio, you can thank Louis Pasteur and William H. Lear. There were no provisional patent applications available when these men created their inventions -- both Pasteur and Lear filed regular patent applications to preserve their rights. In order to give you an idea of how simple it can be to draft a provisional patent application, we have reduced these two patents to provisional applications. The full text of each patent is included in the appendix so that you can compare these with the real patents. We've included the original patent drawings with each provisional patent application but, as we explain in Chapter 4, you can furnish less formal drawings. You will find more examples of provisional applications of famous (and not-so-famous) inventions in Appendix A.

Pasteur's Improvement to Making Beer (Pasteurization)

Background: Prior to Louis Pasteur's invention, the production of beer was hindered because the boiled extract or seasoned hop (known as "the wort") was exposed to air. That exposure affected the quality and amount of beer produced as well as the stability of the beer -- that is, how fast it spoiled.

Pasteur discovered that by preventing exposure to air, a larger quantity and better quality of beer could be produced. Pasteur's process -- later known as pasteurization -- partially sterilized the beer and subsequently was used to sterilize liquids such as milk and orange juice, as well as cheese. His improvement in Brewing Beer and Ale was patented in France in 1871 and in the U.S. in January 1873.

Lear's Car Radio

Background: If you like to listen to music in your car, you can thank William Lear who, with his friend Elmer Wavering, coinvented the first car radio in 1930. Unable to afford a booth fee to show their product at an automotive trade show, Lear and Wavering parked outside the convention center, played their radio and took orders in the parking lot. Lear's company sold the radio device under the trademark Motorola -- combining "motor" and Victrola -- and it was an instant hit. But for Lear, that was only the beginning -- he went on to invent the eight-track tape format and navigation aids for aircraft. He later founded Lear, Inc., the supplier of the Lear jet.

If you're diligent and follow the instructions in this book, you will be able to file a provisional patent application within 24 hours. Of course, as singer James Brown might add,

"Sayin' it and doin' it are such a different thing."

To see if someone could actually accomplish the filing within 24 hours, we asked an inventor to time himself as he went through the paces. Our inventor, an experienced toy designer, has licensed many toys in his 30-year career but had never prepared or filed a provisional or regular patent application. At the end of each chapter, we'll discuss any problems he encountered.

The Invention

The subject of our time trial is a method of simulating tears in a doll (we'll call Baby Tears) using LEDs (light emitting diodes). Our inventor is not claiming rights to any electrical or LED technology related to Baby tears, only to the new use of the LED technology within a "crying" doll.

Initial Problems

The first issue for our inventor is whether to permit the publication of his invention in this book. Once published, it becomes "prior art" (see "Establish an Official United States Patent Application Filing Date for Your Invention" in this chapter). Our inventor would then have one year to file a provisional patent application; otherwise all patent rights would be lost. In addition, if the book were published before the provisional patent application was filed, our inventor would lose the ability to file for foreign patents. (For more on foreign rights, see Chapter 6.)

Another issue is that once the invention is published, our inventor can no longer protect it as a trade secret. As a result, he can't claim the advantage of secrecy within the toy industry. Competing inventors and toy companies could read about the idea, possibly before it comes to market. (For more on trade secrecy, see Appendix B.)

Our inventor is willing to assume the loss of trade secret rights, risk the loss of foreign patent rights, and assume the obligations to file the provisional patent application within one year. (As we'll see, these prior-art risks became a nonissue as our inventor filed several months before this book was published.)

So far, our inventor has spent 45 minutes reading this chapter and considering issues about trade secrecy and publication. Okay, there're only 23 hours and 15 minutes left!