Patent Pending in 24 Hours
The step-by-step guide
David Pressman, Attorney and Richard Stim, Attorney
November 2012, 6th Edition
Take the first step to protecting your invention!
Ready to stamp "patent pending" on your invention? Then you need to file a provisional patent application (PPA), an inexpensive way to claim your hard work. With a PPA, you'll have time to figure out whether you can make a profit from your creation before you invest more time and money.
With Patent Pending in 24 Hours, you have all the forms and information you need to get the job done! Find out how to:
- evaluate hurdles to patentability
- write a clear PPA
- prepare informal drawings of your invention
- conduct a patent search online
- understand basic patent law
- complete all forms required by the U.S. Patent and Trademark Office
- file your application
- modify your invention after filing
The book also includes important legal forms to help you preserve your rights when showing or selling your invention:
- nondisclosure agreement
- patent assignment
- prototype-maker agreement
- joint-ownership agreement
This edition is completely revised with updated case law and patent regulations, updated patent searching information and additional resources.
“A great resource for inventors who want to quickly, efficiently and safely protect their precious ideas.”
-Ron Docie, Sr., Author of the Inventor's Bible
“An invaluable tool in my business of designing and licensing toy concepts. Required reading for all inventors.”
-Andrew Bergman, Inventor of "Pick me up Dolly"
Detailed instructions and examples on how to draft and assemble a "Provisional Patent Application" are the main feature of this product. However, since each application will be unique, a "blank" application is not included in the book.
Blank versions of the following forms are included in the product:
- Nondisclosure Agreement
- Joint Ownership Agreement for Inventors
- Agreement for Creation of Prototype or Patent Drawings
- Invention Assignment
Originally from Philadelphia, San Francisco Patent Attorney David Pressman is a graduate of Penn State University (BSEE) and George Washington University Law School (JD) where he was on the Law Review. He has over 40 years of experience in the patent profession -- as a patent examiner for the U.S. Patent Office, a patent attorney in corporate and private practice, a university instructor, a columnist, and as author of the Patent and Trademark entries to the World Book Encyclopedia. He is an expert on patent filing, prosecution, and licensing and his books have charted the path for over 300,000 inventors. Patent It Yourself is the most highly recommended guide to patenting an invention. Dave is also co-author of How to Make Patent Drawings Yourself (with Jack Lo), Patent Pending In 24 Hours (with Rich Stim), and Patents For Beginners (with Rich Stim).
Attorney Richard Stim specializes in small business, copyright, patents, and trademark issues at Nolo. He is the author of many books, including Music Law: How to Run Your Band's Business Patent, Copyright & Trademark: An Intellectual Property Desk Reference, and Profit From Your Idea. Stim regularly answers readers' intellectual property questions at Dear Rich: Nolo's Patent, Copyright & Trademark Blog. You can also find Rich on Google Plus.
1. The Provisional Patent Application
- How a Provisional Patent Application Works
- Advantages of Filing a Provisional Patent Application
- Potential Disadvantages of Filing a Provisional Application
- Preparing Your Provisional Patent Application
- Drinking Beer and Listening to the Car Radio: Two Provisional Patent Applications
2. Deciding Whether to File a Provisional Application: The Seven Hurdles
- Hurdle #1: Is It Commercial?
- Hurdle #2: Did You Invent It?
- Hurdle #3: Do You Own It?
- Hurdle #4: Is It Useful?
- Hurdle #5: Does It Fit in One of the Patent Classes?
- Hurdle #6: Is It New?
- Hurdle #7: Is It Obvious?
- Our Inventor’s Patent Hurdles
3. Finding Previous Inventions
- Internet Patent-Searching Tips
- Searching the USPTO Website
- How to Read a Patent
- Finding Prior Art That Isn’t Currently Patented
- After the Preliminary Search
4. Drafting the Provisional Patent Application: Part 1—Drawing Your Invention
- Basic Patent Drafting Principles
- Getting Started
- Tips for Inventors Who Have a Prototype but Can’t Draw
- Tips for Inventors Who Don’t Have a Prototype and Can’t Draw
- Drawings for Software, Business Methods, Electrical Inventions, and Chemical Compounds
5. Drafting the Provisional Patent Application: Part 2—Describing Your Invention
- What Do You Call Your Invention?
- What Are the Names and Addresses of the Inventors?
- What Are the Advantages of Your Invention Over the Prior Art?
- What Drawing Figures Have You Included?
- What Are the Components of Your Invention and How Do They Interact?
- How Does the Invention Achieve Its Result?
- What Are Alternative Ways That Your Invention Can Achieve Its Result?
- Putting It All Together
6. Filing and Beyond
- How to File Your Provisional Patent Application
- Filing a Regular Patent Application
- Marking Your Invention “Patent Pending”
- What Happens If You Modify Your Invention?
- International Rules to Remember
A. Provisional Patent Applications
- The Telephone
- Car Radio
- Fly Mask
- Convertible Tent
- Non-Fogging Shower Mirror
- Three-Wheeled Scooter
- Musical Condom
- Fashion Business Method
- Watch With Speed Adjustment During Travel for Reducing Jet Lag (Mitchell Electrical Patent)
- Pre-Monopoly Board Game
- Advertising System for Airport
- Mashed Potato Machine
- Method of Viewing Panoramic Images
- Puppet Construction Kit
- Ergonomic Mouse
- Talking Stick Horse
- Nondisclosure Agreement
- Joint Ownership Agreement for Inventors
- Agreement for Creation of Prototype or Patent Drawings
- Invention Assignment
- Glossary of Useful Technical Terms
- Glossary of Patent Terms
D. The Inventor’s Notebook
- Finding an Attorney
- Keeping Fees Down
- Inventor Resources
- Internet Patent-Searching Resources
- Assessing Foreign Patent Potential
- Patent and Trademark Depository Libraries
The Provisional Patent Application
“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 two foolproof ways to lock in a claim of invention ownership. One way was to build and test the invention and to keep a solid record of the inventing process (usually accomplished with a properly witnessed and dated notebook). Unfortunately, building and testing an invention, unless it’s very simple, is beyond the capability and budget of most inventors.
The second method for claiming ownership was to get a patent. 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 (sometimes referred to as a PPA) 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 postcard, and a cover sheet and fee transmittal form to the USPTO by USPS Express Mail (along with the $125 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 PPA 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 application must be approved by the USPTO. 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.
What If You Don’t File Your Regular Application on Time?
You won’t automatically lose patent rights if you fail to file a regular patent application within a year after you file the provisional application. But you will lose the benefits we describe in this chapter—for example, the earlier filing date and the right to claim “patent pending” status. Even if you wait more than a year, you can still file a regular patent and acquire patent rights to your invention, as long as you did not publish information about your invention or offer it for sale more than a year before you filed the regular patent application … at least until March 16, 2013. If you attempt to file a regular patent application (after the one-year period for your provisional patent application has passed) on or after March 16, 2013, you will be subject to the provisions of the America Invents Act (AIA) (see below, “The AIA: A Timeline”). Under the AIA, the U.S. switches from a first-to-invent system to a first-to-file system, and the current one-year on-sale bar that permits sale or disclosure of the claimed invention less than one year before filing, is terminated (although the Act establishes a limited one-year grace period if the inventor or anyone who obtained the subject matter from the inventor made certain disclosures of the claimed invention). In summary, you cannot file a regular patent application after March 16, 2013 for an invention (a) whose provisional patent application has “expired,” and (b) that has been publicly disclosed or offered for sale prior to the regular patent application filing date.
Some Patent Basics
In case you’re not familiar with patent law, here are a few basics that will help you understand the material in this chapter. (We discuss patent law in more detail in Chapter 2.)
The USPTO issues three types of patents—utility patents, plant patents, and design patents. Utility patents protect what we commonly think of as “inventions.” When we use the term “patents” in this book, we are always talking about utility patents, unless otherwise noted.
An invention can be virtually anything that’s functional. Utility patents protect a broad range of inventions: mechanical devices, medical procedures, chemical formulas, methods of doing business, software programs, animal and plant life, and improvements on past inventions.
Your invention must be new. The USPTO grants patents for new (or “novel”) inventions only. If you file your application prior to March 16, 2013, your invention isn’t new if someone previously invented it, patented it, or wrote about it, or if at least a year has passed since it was first publicly disclosed or sold. If you file your application on or after March 16, 2013, your application will be subject to the provisions of the America Invents Act (AIA) (see below, “The AIA: A Timeline”). The AIA amends the patent law and the inventor’s ability to sell or disclose an invention for one year prior to filing (known as the “one-year on-sale bar”) is terminated. However, the Act establishes a limited one-year grace period if the inventor or anyone who obtained the subject matter from the inventor made certain disclosures of the claimed invention
A patent is a “license to sue.” If you get a patent, you can stop others from making, selling, or using your invention for 17 to 18 years. Think of your patent as a “hunting license”—one that gives you the right to sue infringers for damages and other legal remedies.
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.
Federal Circuit Requires Clarity in Provisional Patent Applications
In 2002, the Court of Appeals for the Federal Circuit (CAFC)—the federal appeals court that specializes in patent cases—issued an important ruling involving provisional patent applications. The case, New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., App. No. 02-1028 (7/30/02), involved two patents: one for a drill bit for horizontal directional drilling of rock formations and the other for a method of horizontal directional drilling. Both patents claimed the filing date of a provisional patent application. The lawsuit occurred when New Railhead Manufacturing, the company that owned the patents, pursued a company it believed was infringing.
At the heart of both patents was an invention in which a drill bit was angled with respect to its housing (known as a “sonde housing”) and operated at a specific heel-to-toe ratio. The CAFC ruled that the underlying provisional patent application failed to adequately describe the angled structure of the drill bits, and therefore, the company that filed the patents could not get the benefit of the provisional filing date.
The court wrote, “The provisional [patent application] never states that the drill bit is angled with respect to the sonde housing, does not mention or describe the toe or the heel, and does not mention or define the heel-toe ratio.” Unfortunately, New Railhead Manufacturing had made offers for sale prior to filing its provisional applications and as a result of the one-year-sale rule, both patents were invalidated.
The New Railhead case reinforces the principles described in this chapter—if you want the benefit of the provisional filing date for a later patent, your provisional application must describe the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use it. If you leave out an element of your invention, fail to explain all of the operating elements, or if your later patent application adds new matter, you won’t be credited with the earlier filing date. If, after preparing your provisional patent application, you are in doubt as to whether it meets the legal requirements, seek the advice of a patent professional. Information about locating an attorney can be found in Appendix E.
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 U.S. patent application filing date for the invention.
Your application is preserved in confidence.
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. That 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.
Watch Out for Scam Artists
The Dallas Morning News included the following statement in an article:
“Many young companies don’t have the money now to seek out a permanent patent—which can cost $10,000 to $15,000 per application—and are asking Mr. Klinger to help them get a one-year patent. Provisional patents cost less than $1,000 to file.”
Oops! As you know by now, the provisional patent application does not, by itself, get you a patent; it provides a record of your invention that you can rely on—at least for 12 months—to support a regular patent application.
But misconceptions about provisional patent applications reappear with such frequency—even in newspapers—that a lot of inventors believe them. It’s no wonder that scam invention promotion companies can prey on unknowing inventors by claiming that a provisional application will get you patent rights. The USPTO website (www.uspto.gov) and the Federal Trade Commission website (www.ftc.gov) both offer tips on how to avoid disreputable invention promotion companies.
The AIA: A Timeline
The primary change in this sixth edition is the inclusion of the America Invents Act (referred to in this book as the “AIA”) that was enacted September 16, 2011. The AIA makes major changes in the law but it’s not a complete revision of the patent statutes. Relevant aspects of the new law are explained in this edition. However, not all of the provisions were implemented upon enactment. Below is a timeline of how the changes have and will occur.
Changes That Took Place Immediately (Upon Enactment)
It is harder to obtain patent reexamination. The Director can only authorize a reexam if “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” And there will be no more federal court review of PTO reexaminations.
If you’re sued for infringement but you were commercially using the patented technology more than one year before the filing date of the claimed invention, you have a defense against a claim that you infringed (although that defense doesn’t invalidate the patent). The Act includes a definition of “commercial use.”
The PTO has stopped granting patents for strategies for reducing, avoiding, or deferring tax liability.
Accused patent infringers often use the “best mode defense” in which they argue that the patent holder failed to disclose the best mode of carrying out the invention. The best mode defense is no longer available in cases filed after enactment (Sec. 15), although the law still requires a patent application to disclose the “best mode.”
Virtual marking—the process of using a publicly accessible website to provide a link between a patented invention and its patent number—is now considered as sufficiently providing public notice for that patent. This change will apply to all cases filed including cases pending at the time of enactment.
It has become common practice for parties to bring a lawsuit claiming (or making a counterclaim) that an invention is falsely marked, especially if the mark exists on copies of the invention after the patent has expired. The Act
provides that privately filed false marking claims (those claims not brought by the government) will require proof of competitive injury. Marking with the number of a patent that covered that product but has expired will no longer be considered false marking. This provision will apply to all cases filed including cases pending at the time of enactment.
Joinder of unrelated accused infringers is now limited in actions commenced on and after enactment, and
Issuance of patent claims directed to or encompassing a human organism are barred as of enactment.
10 Days After Enactment (September 26, 2011)
Higher fees. Patent filers must pay a 15% surcharge on all patent fees.
There’s a $4,800 fee for filing a prioritized application. Small entities pay only $2,400.
60 Days After Enactment (November 16, 2011)
A new $400 fee ($200 for small entities) must be paid by those applicants who do not file utility patent applications electronically.
12 Months After Enactment (September 16, 2012)
The Act modifies certain requirements regarding the oath or declaration required of an inventor. If an inventor has assigned (or is obligated to assign) an invention, the assignee can file the application for the patent.
The Act provides that inter partes hearings after a patent has been issued are now limited to challenges for novelty and nonobviousness—that is, to issues relating to Sections 102 and 103 of the patent law. Such claims can only be based on prior art consisting of patents and printed publications and must be filed nine months after the patent issued. This provision also establishes many additional technical and procedural rules for postgrant reviews, generally making it more difficult to bring postgrant reviews. For example, it prohibits a postgrant review and inter partes review if the party filing has filed a related civil action before filing the petition.
The Act sets forth new rules about the Board and provides for appeals to the Court of Appeals for the Federal Circuit (CAFC) from certain Board decisions. Prior to the PTO’s granting of a patent, the Act allows a third party to submit relevant publications for the patent examiner to consider (commonly referred to as preissuance submissions).
The Act establishes a system of supplemental examinations for a patent owner “to consider, reconsider, and correct information believed to be relevant to the patent.”
The Act requires the Director to establish a transitional postgrant review proceeding to consider the validity of business method patents.
18 Months After Enactment (March 16, 2013)
Patents filed 18 months after enactment will be subject to new first-to-file and prior art rules, effectively ending centuries of first-to-invent rules. (Throughout this edition, we refer to first-to-file as FTF.) The current one-year on-sale bar—that permits sale or disclosure of the claimed invention less than one year before filing—is terminated, although the Act establishes a limited one-year grace period if the inventor (or anyone who obtained the subject matter from the inventor) made certain disclosures of the claimed invention. The novelty and nonobviousness sections of the patent law (Sections 102 and 103) are amended and existing provisions relating to inventions made abroad and statutory invention registration are terminated.
The Act permits a patent owner to bring a “derivation hearing” at the PTO (replacing interference proceedings) against another patent owner claiming to have the same invention and who has an earlier effective filing date. The derivation hearing must be filed within a one-year period beginning on the date of the first publication of a claim in the earlier filed application. Alternatively, the owner of a patent may sue the owner of another patent that claims the same invention and has an earlier effective filing date. These lawsuits can only be brought if the invention claiming priority was derived directly from the person seeking relief.
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 or file one yourself. 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.
Establish an Official U.S. Patent Application Filing Date for Your Invention
Filing a provisional patent application gives you an official patent filing date. As explained above (see “The AIA: A Timeline”), commencing on March 16, 2013, the U.S. will switch to a first-to-file (FTF) system and reward the inventor with the earliest official filing date. Even those who file before March 16, 2013 under the first-to-invent (FTI) system should get to the USPTO as early as possible. According to many patent experts, even under the FTI system, the first person to file at the USPTO will often win the battle over who was first to invent something (known as “priority”).
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 April 1, 2013. He then waits a year and files his regular patent application on March 1, 2014. The USPTO later issues him a patent. Sam invents a mobile telephone switching system identical to Bob’s invention but he doesn’t file until April 10, 2013. Bob’s provisional patent application will be considered prior art and can be used to block Sam’s application.
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 you file a regular application within 12 months and you need to rely on the date of your PPA because a dispute arises with another inventor as to your rights (or the PTO cited a reference against your patent application that has an effective date earlier than your regular patent application but not earlier than your PPA). Otherwise, the provisional patent application will sit safely tucked away.
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.
Please, Mr. Postman
According to inventors’ lore, you can prove the date of your invention by describing your invention and mailing a copy of the description to yourself—that is, by certified or registered mail. Supposedly, the postmark on the sealed envelope proves your date of invention. Our advice—Fuggedaboudit! The courts and the USPTO refuse to accept such so-called “post office patents” as evidence of patent priority. In addition, the date of invention will become largely irrelevant after March 16, 2013, when the U.S. adopts a first-to-file patent system.
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 36 (or more) 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, 2009. If her application is approved, the patent will expire on March 1, 2029. If Loren files a provisional patent application for her invention on March 1, 2009 and then waits a year to file her regular patent application, the resulting patent will expire on March 1, 2030.
Advantages for Foreign Applicants
Inventors living outside the United States 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 United States and extend the life of the U.S. patent, as discussed in the previous section.
Provide an Alternative to Building and Testing Your Invention
One final advantage of filing a provisional application—at least until March 16, 2013—is that it proves that the invention has been “reduced to practice.” Reduction to practice establishes the official “date of invention.” Under the U.S. “first-to-invent” rule (which terminates on March 16, 2013), 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.
Under this soon-to-be-terminated first-to-invent (FTI) system, 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. In other words, under the FTI system, 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.
After March 16, 2013, reduction to practice will no longer be as important. The U.S. will adopt a first-to-file system (FTF) that will reward the first to get to the patent office, not the first party to reduce the invention to practice. Under the FTF, if two inventors file patent applications on the same patentable invention, the PTO will award a patent to the first inventor to file, even if the other inventor conceived and built and tested the invention first. It doesn’t matter whether the first patent application is a provisional patent application or regular (non-provisional) patent application: the first to file either document will get the patent. An exception occurs if the second inventor to file (inventor A) can prove that the first inventor to file (Inventor B) “derived” (stole, appropriated, or acquired) the invention from Inventor A, then the patent will go to Inventor A.
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 in “full, clear, concise, and exact” terms, 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 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 United States 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 Appendix A 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.
USPTO Cautions Regarding Provisional Patent Applications
Note that the USPTO has published the following cautions regarding provisional patent applications:
Provisional patent applications are not examined on their merits.
The date of a provisional patent application cannot be claimed if a regular patent application has not been filed within one year.
A provisional patent application cannot claim the benefit of an earlier application (foreign or domestic).
The disclosure of a provisional patent application must be clear and complete enough so that an ordinary person skilled in the field of the invention can make and use the invention.
All contributors to the inventive subject matter of the provisional patent application must be named in the provisional patent application.
The regular patent application must name at least one inventor who was named in the provisional patent application.
In order for a regular patent application to claim the date of the provisional patent application, the provisional patent application must be filed with the proper fee and must be complete.
If the basic fee is not paid with the provisional patent application, the fees can be paid later, but the PTO charges a penalty fee.
Provisional patent applications are not available for designs.
No subject matter can be added once the provisional patent application is filed.
No patent will result from the provisional patent application unless a regular patent application is filed within a year or the provisional patent application itself is converted to a regular patent application.
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 United States in January 1873.
A Provisional Patent Application for “Pasteurization”
I discovered a better way to brew beer and ale. My process prevents the wort (the boiled extract of malt or material seasoned with malt or other qualifying ingredient seasoned with hops) from exposure to air. The result—compared to existing methods of beer production—is the production of a larger quantity of beer as well as a beer that is more aromatic and less likely to deteriorate in transit or storage.
I accomplish this by expelling the air from the boiled wort while it is confined in a closed vessel (or vessels).
The attached drawing helps to explain my invention. Three casks AAA (Fig. 1), made of iron, wood, or other suitable materials, are supported on stands below a water pipe E. The water pipe has branches, each with a valve, and at the end of each branch, a flexible hose and spray nozzle P. On another stand T is an apparatus MM that generates carbonic-acid gas. The carbonic gas is supplied to the casks and is released from the casks at the escape tubes x which extend into cups or chambers v from which the gas can be collected by a gasometer.
The wort is prepared in the usual manner and while boiling hot is placed in a cask. Carbonic-acid gas is conveyed into the cask for the purpose of expelling air. There must be a thorough penetration of carbonic-acid gas into the liquid to expel all contained air.
Then, the water pipe sprays the cask to cool it. A trough c is placed below the casks to collect the water. As the temperature is reduced to about 20 to 23 degrees Celsius (68–73 degrees Fahrenheit), the yeast or fermenting material is added to induce fermentation. After first fermentation, the beer can be sent through the valves R into casks or barrels for future use.
The beer does not have to be removed and fermentation can be completed in the cask. But in this case, a small quantity of air may be drawn into the cask to speed fermentation. The air drawn into the tube should be filtered through cotton or passed through a hot tube to kill or extract any germs that it may contain. The apparatus shown is adapted for making small quantities of beer but the capacity may be varied quite easily.
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.
A Provisional Patent Application for Radio Apparatus
I have invented a new radio receiver that is portable and can be used in automobiles and other similar vehicles. It can be operated by a remote control that can be located within easy reach of the operator.
In automobiles, considerable vibration and jerking occurs. In the usual radio there are variable condensers or capacitors. These are usually mounted so that their axis is horizontal during normal operation. Such condensers are particularly sensitive to the vibration and jerking, resulting in a change of adjustment.
I have determined that this can be eliminated by disposing the gang condenser so that its shaft is in a vertical position. This will enable practically all the jars and bumps to be taken up by the bearings of the condenser and eliminate or reduce any tendency to throw the condenser out of adjustment.
Also, the vertical position enables the remote control apparatus to be streamlined. Practically all of the remote controls used on such sets make use of a flexible cable, which must be connected to the condenser’s shaft. The vertical mounting makes it possible to minimize the number of sharp bends and turns in this cable.
Also, when the radio is mounted in the vehicle, it must be protected from water, sand and other elements to which anything suspended underneath an automobile is exposed. To provide such protection, I provide a container, preferably metallic, for shielding purposes. I permanently fasten the container to the automobile, preferably hanging it from the bottom of the floorboards. I mount the radio as a unit on a chassis in this container. This makes it easy to replace the vacuum tubes and service the radio.
The set is energized from any suitable source of potential, usually the storage battery of the automobile and a separate battery for the plate supply of the radio’s vacuum tubes. Various connections between these sources of potential and the set must be made through the radio’s protecting casing. If an ordinary cable is passed through the casing, repeated removals of the set from its container will result in sufficient clearance between the cables and the container wall to admit water, sand or other undesirable elements. In order to avoid this, I preferably provide a detachable connection, one part permanently fastened to the casing and the other part permanently fastened to the chassis. This detachable connection may consist of any suitable plug and socket arrangement, having as many terminals as may be found desirable. With such a detachable connection, the complete chassis may be removed and replaced as often as desired, without endangering the protection afforded by the casing.
The drawing shows a radio set embodying the above concepts and mounted in an automobile.
Suspended underneath the automobile’s floorboards, through a suitable aperture, is a metal casing 1. It contains the radio receiving set 2. This set includes the usual elements, such as rf transformers, vacuum tubes, tube sockets, and the like. It also includes a tuning element, a gang condenser 3. The gang condenser has a rotor 4, rigidly mounted on a shaft 5. The entire radio is mounted on a chassis 6 and can be removed as a unit from casing 1 upon the removal of cover 7.
The condenser is mounted so that its rotor shaft 5 is vertical when the set is installed in the automobile.
To operate condenser 3, a pulley 10 is rigidly fastened to the upper portion of its rotor shaft 5. Pulley 10 has a pin 11, to which is anchored one end of a coil spring 12. The other end of the coil spring is anchored to a fixed portion of the set, so that there will be a tendency for the condenser to assume a position of either minimum or maximum capacity. I have shown it in the maximum position.
Pulley 10 is also provided with an anchor block on its edge. One end of a cable 16 is anchored to the anchor block. This cable is positioned in a groove 17 in the periphery of pulley 10 and extends out through the side of casing 1. Cable 16 is in a sheath 17, and the entire assembly leads to a control unit 20, here mounted on the steering column of the car. The control unit has a control knob 21 for moving cable 16 lengthwise. By actuating knob 21, the driver may adjust rotor 4 in any desired position with respect to the fixed plates of condenser 3.
To energize the set, suitable connections are made to current supplies—the automobile storage battery and a separate battery for the plates or anodes of the vacuum tubes.
A cable 25 leads to a combined volume control and switch 26 of control unit 20. From the control unit a pair of cables 27 and 28 lead to a socket 29, rigidly fastened in the bottom of casing 1. Socket 29 is tightly sealed in casing 1 so that no water or dirt can enter the casing. A cooperating plug 30 is mounted on chassis 6 so as to mate with socket member 29 when the chassis is in the normal position in the casing.
Various wires from plug 30 go to the several pieces of apparatus in the radio. When the radio chassis is removed from casing 1, plug 30 is automatically withdrawn from socket 29. Chassis 6 is rigidly mounted in casing 1 by suitable hardware (not shown).
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 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.
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 U.S. 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 are only 23 hours and 15 minutes left!