Provisional Patent Service: Everything You Need to Know
A provisional patent service is a company or organization that offers assistance to inventors through the process of preparing a provisional patent application.9 min read
A provisional patent service is a company or organization that offers to assist inventors through the process of preparing an application for a provisional patent. While there are many reputable firms and patent attorneys who will provide this service, beware of disreputable groups or individuals offering cheap preparation of your provisional patent application, less than $2,000. The following will help you protect yourself from these scams.
Basics of the Provisional Patent Application
The individual investor who works independently from the big organizations faces a dilemma when it comes time to shop his invention to manufacturers. There is always the risk of the potential manufacturer commandeering the invention and manufacturing it as its own. To mitigate this threat, the provisional patent application (PPA) was created under federal law to protect the independent inventor when meeting with potential manufacturers to discuss the invention. It provides for a procedure to file the invention with the U.S. Patent & Trademark Office (USPTO), quickly, relatively easily and less expensively than a full patent application. However, once the PPA is filed, a non-provisional patent application must be filed within 12 months to maintain protection for the invention. It is important to note that a provisional patent application will not automatically mature into a non-provisional patent. Also, it does not undergo examination by the USPTO.
Preventing Manufacturers from Stealing Your Invention
Your invention is only as valuable as your ability to protect it. While most potential manufacturers are reputable and honest in their dealings with inventors, inventors do not want to stake their livelihood on the trust of manufacturers, and most manufacturers refuse to sign a non-disclosure agreement without examining the invention. Without patent protection, you could easily lose the ability to control the manufacture of your invention.
Under the America Invents Act of 2011, disclosing or selling your invention to the public prior to applying for a patent may hinder you from obtaining protection under the patent process. Obtaining a patent will ensure that, at least for a limited amount of time, only you control the manufacture and distribution of your invention. This is a huge advantage in the marketplace.
Traditional Approaches to Protecting Inventions
The process of applying for a full patent can be arduous and very costly especially if the inventor decides to work with an attorney. Prior to 2013, an inventor could successfully protect his invention by providing proof, through documentation of creating and testing, that he was the original inventor of a product or method. Since March 16, 2013, patent protection goes to the first inventor to file a provisional patent application. Under this system, the “first-to-file” the PPA will ultimately be awarded the patent for that invention.
Another protection is to label the invention “patent pending” after filing the application for a provisional patent. This label often deters potential manufacturers from trying to copy the invention for fear of a later lawsuit for infringement.
File a Provisional Patent Application
A provisional patent application is short (5-10 pages) and written plainly, avoiding the difficult legalese found in regular patent applications. Because of this, the PPA costs a fraction of the non-provisional application and involves far less work. Though relatively easy to complete, the PPA provides valuable protection to the inventor by allowing use of the “patent pending” label for a period of 12 months.
Filing the non-provisional patent application within 12 months also allows the inventor to use the date of originally filing the PPA to help defend against claims of infringement by other similar inventions. The provisional patent application must, through drawings and written word, describe in detail how your invention is made and what it does.
How a PPA Differs From a Regular Patent Application
Full patent applications are very expensive as compared to the PPA, costing up to tens of thousands of dollars in patent search and attorney fees. In contrast, the provisional patent application costs $65 for individuals and micro-entities, $130 for small organizations, and $260 for the largest companies.
In addition to cost, the provisional patent application is much less complex than the full application. The Patent Application Declaration refers to a statement made under penalty of perjury declaring that you are indeed the inventor of your creation and have provided all the information that is relevant to the examination of your patent application. The Information Disclosure Statement, on the other hand, is a statement acknowledging that you have disclosed all the relevant information concerning the originality of your invention.
Although a provisional patent application does not entitle the applicant to a patent, it does allow the inventor to protect his invention while shopping it around and determining whether to pursue a non-provisional patent. The PPA is not permanent. In order to maintain protection for your invention, a full application must be made within 12 months and approved by the U.S. Patent and Trademark Office.
Truth About Provisional Patent Applications
A poorly completed provisional patent application will at best provide you with no benefit. At worst, it can be used as evidence that as of the date of filing the provisional patent application, there really was no invention or the invention was only an idea and, therefore, not eligible for protection.
Because of this potentially catastrophic result, the inventor must have a good understanding of the provisional patent application process and requirements so as to not become a victim of those who either lack the knowledge to competently prepare the PPA or who willfully set out to scam the unsuspecting inventor. There are many lurking on the internet pushing provisional patent services for cheap, which may end up costing you much more in the long run. Inventors need the help of competent and ethical patent professionals who should be either a patent lawyer or patent agent.
Drawings in a Provisional Patent Application
One area in which the unsophisticated inventor may be led astray is patent drawings. Because the provisional patent application is a shorter, simpler form than a full patent application, some believe that the requirements also differ and that drawings are unnecessary. This is a common assertion with non-attorney patent applications services.
While it is true that provisional patent applications are not as formal as the full patent applications, this is a matter of form versus function. The function of a provisional patent application is to obtain protection for your invention. This requires a complete disclosure of what the invention is and how it works, and drawings are an essential aspect in understanding that. The drawing gives illustration to the sometimes complex and dense written explanation of the invention. The only exception to this rule would be chemical compounds, which rely on the way they were formed rather than the way they look.
A picture is definitely worth more than a thousand words in your patent application. It enables you to expand upon the written descriptions in your application and provide a better understanding of your invention.
Description of a Provisional Patent Application
Correctly completing a provisional patent application is difficult, and advice on how to do this from laypersons is normally bad because of lack of knowledge of the law regarding patents.
A defective provisional patent application, especially in the disclosure of the invention, is useless and may also have ruined the possibility of any future right to protect the invention. Unfortunately, you may not know the PPA is defective until you are working with the patent examiner in the full patent application process who refuses to relate your patent back to the original date of filing the PPA.
Advantages of Provisional Patent Application
Since United States patent law switched from a first-to-invent model of patent protection to a first-to-file model, the provisional patent application has gained importance and should be utilized to provide protection for inventions as early as possible. The PPA is appropriate for use whether you have a relatively simple invention crafted in your workshop at home or a Fortune 500 company has developed a sophisticated software application. Also, use of the PPA is appropriate immediately after an invention has progressed to a stage where it is no longer an idea but a concrete thing, although the invention may not be completely finished.
Hiring a patent attorney to assist you in protecting your invention is the best option, but if this would divert needed resources from completing your invention, then there are other options. Just make sure that if you choose a provisional patent service, ask questions to protect against bad advice.
What Is a Non-Provisional Patent Application?
Although a provisional patent application is important, it can never result, by itself, in the award of a patent. While the PPA acts as a bookmark for a given date and time and allows you to designate your invention as “patent pending,” a patent may only be granted after filing a non-provisional or “full” patent application. The filing of the non-provisional patent application prompts review of the invention by the U.S. Patent & Trademark Office.
Provisional Patent Application Legal Fees in U.S.
Many inventors, especially small organizations and individuals, concern themselves first with what a patent attorney will charge for preparing a provisional patent application. The attorney fee depends greatly on the type of invention and estimate of time to complete the application. With most patent attorneys charging $400 per hour, it is easy to see that legal fees can increase quickly for a quality provisional patent application. You can gauge the attorney's expected time commitment by dividing his fee by the hourly rate to calculate the number of hours the attorney anticipates working. As an example, an attorney charging $4,000 plans on spending 10 hours on the matter.
A survey of a group of intellectual property lawyers in 2013 indicated that the average cost in legal fees alone of a provisional patent application was $4,500. While this may sound high to some, it is important to bear in mind that the provisional patent application process makes up 80 percent of the attorney's time in preparing a non-provisional patent application.
The only difference between the two is that the “Claims” section, required in the full patent application, is missing from the PPA. However, the person who will be preparing the application for a provisional patent still needs to have a clear idea of the claims that will be filed in the regular patent application. If a provisional application is properly drafted by a good patent attorney, the attorney does not need to add anything else other than the “Claims” section when filing the full patent application later.
Therefore, the knowledgeable lawyer who costs more on the front end and drafts a proper PPA makes up for this expense by efficiency in the end in drafting the non-provisional patent application from information already gathered in preparation of the PPA.
Options for Filing a PPA
An inventor has three main options for preparing and filing the PPA:
- Risk the danger of using a cheap patent service
- Hire a qualified patent attorney
Self-Drafting the Provisional Patent Application
The old adage is that a person representing himself has a fool for a lawyer. Although the USPTO allows inventors to self-draft the PPA, this is not wise unless the inventor has the time to learn the patent process. There are major risks of mistakes that could greatly diminish or destroy the ability to obtain a patent and, therefore, the value of the invention. Inventors should be fully aware of these risks before proceeding.
Pay a Low-Priced Patent Service to Prepare Your PPA
Although not recommended, hiring a low-priced patent service may be the only option for cash-strapped inventors. If choosing to go this route, the inventor should ask the service these questions:
- Are you registered and licensed with the U.S. Patent and Trademark Office?
- What is your registration number with the USPTO?
- Will the patent application be drafted by a registered patent attorney or an unregistered person?
- What is your experience in preparing patent applications?
- What is your scientific or technical background?
- How can you provide services with such inexpensive fees?
Note that a patent service provider who is not a licensed patent lawyer is not legally allowed to prepare a provisional patent application on your behalf. If this is the case, you should look for another patent service.
Hire a Quality Patent Attorney to Prepare Provisional Patent Application (or a Non-Provisional Patent Application)
While this is the most expensive option, retaining the services of a patent attorney is the best option to minimize the risks of a defective application or rejected patent. Often, in the long run, paying a competent lawyer on the front end will result in cost savings or increased return on investment. It is especially important to hire a high-quality attorney if you are expecting your patent rights to be worth a lot of money in the future.
Provisional Patent Application Requirements
It is important to get your patent application right the first time as correcting errors later may not be available. This is even more important under the current first-to-file system as opposed to the first-to-invent system the U.S. followed prior to 2013.
Free Legal Services for Patenting Your Invention
In response to the rising costs of retaining qualified attorneys to assist individual and small independent inventors, coupled with the high risk of defective filings and victimization by cheap provisional patent services, the USPTO initiated a program for attorneys to volunteer their time to provide free services to assist independent inventors who cannot afford to hire an attorney on their own. In conjunction with this, the USPTO provides free training to increase knowledge and awareness of the patent process. In order to qualify for these free services, the inventor must have a household income equal to or less than 300 percent of the federal poverty level.
A micro-entity is entitled to a 70 percent discount off the fees incurred in filing, examining, and maintaining its patent application, while a small business can get a 50 percent discount off patent service fees. The fee for a regular utility patent application is $140 for a small business and $70 for a micro-entity.
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