|
Provisional Patent Application Option
You may ask "If patenting is so chancy, why should I spend $20,000 or more? Why not just file a cheap provisional application for, say, $5,000 or less, tell my investors or partners or shareholders that I have a patent application pending, and let someone else worry about it later?" The question is valid. Certainly it often costs appreciably less to file a provisional patent application than a complete application. But bear in mind the following:
-
A provisional patent application expires after 12 months. It must be superseded by a complete application if any patent protection is to be granted. So any cost saving is short-term. Furthermore, any counterpart patent applications filed in other countries must generally conform to complete-application standards.
-
A complete application will enjoy the benefit of the filing date of the provisional application only to the extent that the provisional includes a disclosure of the invention sufficient to enable the reader to make practical use of the invention to advantage. If potentially claimable features of the invention are omitted or given shallow skeletal treatment in the provisional application, then the provisional filing may not support the claiming of those features in the later complete application.
-
It is standard practice for serious investors, licensees, business partners, etc. to conduct "due diligence" investigations to determine the apparent strength and value of any pending patent applications of the business under examination. These due-diligence investigations, which often are based in whole or in part on advice from independent patent counsel, will normally reveal whether or not a provisional application constitutes a sound basis for a complete application that will yield effective patent protection for the invention.
-
Some patent firms acquire a reputation for doing thorough work at a fair fee for the work done; others develop a reputation for doing work on the cheap. When your investors/partners/shareholders enquire about your patent position, they may be very interested to know what firm prepared your patent application.
Sometimes a provisional filing can be justified because of the need to obtain the earliest possible filing date for a patent application. We are prepared to file provisional applications to "stop the clock" but we strongly recommend an early follow-up review of any provisional application, and frequently recommend the filing of one or more further provisional applications to supplement the first one filed, or the filing of a complete application, so that any potentially claimable features of the invention will be adequately described and illustrated in an application bearing the earliest possible filing date. The complete application and any counterpart patent applications filed in other countries may claim multiple priority based on all provisional patent applications filed up to 12 months earlier.
|
|
