How to Write a Provisional Patent Application

Bill Creen asked:




Learning how to write a provisional patent application YOURSELF is a critically-important first step for a new inventor.

Attorneys and patent agents would likely charge you many hundreds, or even thousands of dollars to prepare these documents — but you can do it yourself, and SAVE.

When properly completed and submitted, you will be rewarded with the following benefits:

- twelve months of protection on your idea or invention
- the right to use ‘Patent Pending’ with this item
- you save $800 – $1,200 or more each time you file a new idea
- others cannot patent the same idea or invention for one year
- you have a strong bargaining position with potential investors, manufacturers, or licensees
- you can show and promote your project without the fear of it being copied or ‘stolen’

There’s a lot of information available out there on how best to proceed. No one recommends that an inexperienced (read: non-attorney) inventor prepares the final patent application . . . this requires far more expertise and experience than does the ‘provisional’ app.

A do it yourself “kit” is available for download. It contains all of the actual forms — and only those forms required by the United States Patent and trademark Office (USPTO). The kit has step-by-step, forms-by-form, and line-by-line instructions on exactly how to prepare the document package.

This kit is reusable and GUARANTEED to work for you. If you have additional marketable ideas, you may use the kit over and over, with no limits. Note however that the USPTO requires that each application must be accompanied by a fee of $110.

Phyllis
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What is a Provisional Patent?

Mat Grell asked:




Provisional Patent Application (1 year term) – Provisional applications are US applications for a patent which do not mature into an issued patent (not examined by the USPTO) unless further steps are taken by the applicant within twelve (12) months of filing the provisional application.

What are Provisional Patents used for?
Such applications are designed to provide lower cost first patent filing by reducing the formal requirements such as not requiring formal drawings, claims, oath and declarations, or an information disclosure statement; however, if drafted properly the provisional application provides the inventor with an application priority date and “patent pending” status.

Note: A provisional application must be converted to a non-provisional application within one year of the filing date to maintain priority based on the provisional filing. Failure to file the non-provisional could result in loss of patent rights, including a complete bar to obtaining a patent.

Here is a checklist to help you decide what type of patent is right for you:

What is my timeline for getting my invention to the marketplace?
Is there an urgency to market my product?
What is my budget for obtaining a patent?
Once patented, what is my marketing plan?
Is there someone I can call who has filed a provisional patent in the past?
Have I visited trusted websites to learn as much information as possible about this type of patent?

Lastly, I want you to understand that obtaining a patent can be the biggest day of your life. Please don’t jump into anything until you have done your homework.

Patrick
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Can I add new claims when I file a full patent after provisional patent?

Seongjae asked:


I filed a provisional USA patent. After filed, I found new things related to the provisional patent I already filed. I wonder if it would be ok to add a few items I invented linked to the original provisional patent invention when I file a full patent?

Donna
Posted in Other - Science | 1 Comment

Can I use photos when filing a Provisional Patent Application (PPA)?

Einstein asked:


Websites on filing patents yourself seem divided in opinion on this matter. Some recommending photographs, others almost insisting I submit drawings in India ink.

What’s the bottom line? Provisional patents are only good for a year; not much danger of a photograph fading in a year..

Melvin

Posted in Law & Ethics | 2 Comments

Intellectual Property, Patent Law, Patent Infringement Invalidity Regulatory Law Pharmaceutical

Rosanna Cooper asked:




In the case of Les Laboratoires Servier and Another v KRKA Polska SP.ZO.O. and Another [2006], the claimants made an application for an interim injunction to prevent the marketing and distribution of a drug which they claimed infringed their patent. The claimant companies were in the business of manufacturing and researching pharmaceutical products. The first claimant was the second largest French pharmaceutical company worldwide, and the second claimant was a wholly owned subsidiary that marketed and researched such products within the UK.

The defendants were members of a group of companies involved in the sale and distribution of a large number of generic pharmaceutical products worldwide.

The claimants’ most successful product from a sales standpoint was an angiotensin converting enzyme inhibitor drug by the name of Coversyl. That drug contained the active ingredient perindopril erbumine (“Perindopril”) in the alpha crystalline form. The claimants had registered patent EP (UK) 1 296 947, which related to the alpha crystalline form of Perindopril and the method of its preparation. That patent had been unsuccessfully objected to by the defendants. The appeal by the defendants in relation to that decision was still pending.

The claimants discovered that the defendants had obtained marketing authorisation for a generic Perindopril in the United Kingdom. That authorisation had been granted via a neutral recognition procedure, the reference state being Hungary, where the claimants had previously successfully prevented the defendants from marketing a generic alpha crystalline product.

Correspondence thus ensued between the parties, by which the claimants requested product descriptions and samples to be sent for independent analysis. Pending the outcome of the main action, the claimants issued proceedings and sought an interim injunction preventing the defendants from importing, offering to dispose of or disposing of within the United Kingdom, a generic pharmaceutical product containing, as its active ingredient, Perindopril in the alpha crystalline form.

The claimants had previously obtained such an injunction against another generic pharmaceutical manufacturer, and a further manufacturer had undertaken not to market such products until the determination of the main action. However, the defendants resisted that application, and sought summary judgment against the claimants on the basis that they had shown no reasonable prospect of succeeding due to the patent being invalid.

The claimant submitted that there was indeed a serious issue to be tried. In relation to the balance of convenience, it was submitted that if the defendants were allowed to market their generic product prior to the outcome at trial, the National Health Service (“NHS”) pricing policies relating to the prescriptions of generic pharmaceuticals would have caused irreparable continuing losses in respect of revenues and market share.

In addition, the claimants maintained that the patent was valid, and therefore the defendants had failed to demonstrate that the claimants’ action had shown no real prospect of success. The defendants submitted that the patent had been invalid on the following two grounds:

Lack of novelty and obviousness on the basis that a previous patent, EP 0 308 341 (patent 341), described the manufacturing process for the alpha crystalline variant; and
The claimants had caused prior sales of the alpha crystalline variant before the priority date, and, that prior sale would have enabled a skilled person to discover the manufacturing process of the alpha crystalline compound.

Three main issues fell to be decided before the court, namely:


Whether there was a serious issue to be tried;
If so, whether the defendants had demonstrated that the case advanced by the claimants held no real prospect of success; and
If not, whether the balance of convenience lay in favour of granting the injunction.

The court held that in this case, the issue of the validity of the alpha crystalline patent was undoubtedly a serious issue, and was one that fell to be determined at the trial of the main action. The defendants had strong arguments with which to question the validity of the patent on both grounds of challenge. However, the basis of the challenge on the ground of lack of novelty concerned the construction of a particular section of the methodology contained within patent 341.

Furthermore, whilst the defendants had shown that there had been a prior sale of the alpha crystalline variant, the evidence supporting the proposition that that sale would enable a skilled person to discover the manufacturing process had been based upon a number of assumptions. Although these assumptions were compelling, the evidence provided by the defendants had not demonstrated that the claimants’ case had no real prospect of success.

The court therefore decided that in those circumstances, the irreparable, continuing, and unquantifiable losses that would have been suffered by the claimants (had the defendants been allowed to market their generic product pending the outcome of the trial) resulted in the balance of convenience falling in favour of the claimants. Therefore, the injunction that was sought would be granted.

Oscar
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Provisional Patent Applications – A Tool For Business Innovations

Steve Sponseller asked:




A provisional patent application is a useful tool for certain innovations, which are important to many companies. Proper protection and development of those innovations can strengthen and expand your business.

Filing a provisional patent application establishes a filing date for the innovation without the formal requirements of a non-provisional patent application. Here are a few key features of a provisional application.

No Examination – Provisional applications are not examined – they merely establish a date of filing for the invention disclosed in the application. The application itself is abandoned automatically one year after filing. To begin the examination process necessary to obtain a U.S. Patent, and obtain the filing date established by the provisional filing, the inventor must file a non-provisional patent application within one year of the filing date of the provisional app.

One Year to “Test” – By establishing a filing date, the inventor or business can use the one year period to develop or test the market for the invention. If the invention is developed and appears to have commercial value, the company can proceed with the filing of a non-provisional application that claims priority to the earlier filing date. If the company decides not to pursue the invention, it has saved the time and costs associated with preparation of a non-provisional application.

Less Expensive – Preparation and filing costs are often less expensive due to the simpler filing requirements, thereby deferring a portion of the costs until the non-provisional application is prepared and filed.

Faster – These applications can also be prepared relatively quickly due to the simple formatting requirements. This is particularly useful when it is desirable to quickly establish a filing date prior to a public disclosure or demonstration of the invention.

Notation – Once filed, the company can use the term “patent pending” on products that contain the invention. This designation may be useful in marketing and positioning the company as an “innovator”.

Many people mistakenly believe that a provisional application will eventually mature into a U.S. Patent. As discussed above, provisional patent applications are automatically abandoned one year from the filing date. Thus, inventors need to file a non-provisional application within one year to obtain the benefit of the provisional’s filing date.

Since every company and every innovation is unique, be sure to consult with a qualified attorney or agent to discuss the specific details of your innovation and whether a provisional application is beneficial to your situation.

Jeffery
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Do they examine provisional patent applications?

niksag_3000 asked:


If I file a provisional patent application and then use the 12 months to see how to make,sell and market this product, will it be protected? How would I know if it does not exist? I know when you file the non provisional application you also pay for the examination process before they grant you a patent.

Tell me what I should consider when filing a provisional patent application.

Jim

Posted in Law & Ethics | 3 Comments

Provisional or Non-provisional Patent Application – Which Should You Choose?

Terry Williamson asked:




A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single rare exception noted below. It automatically expires after twelve months following the day of filing and cannot be revived.

It does provide a priority date for concurrent later-filed non-provisional applications for the content that is in the provisional. This means that references that could defeat the later-filed application as to the matter in the provisional (but which could not defeat the provisional filing date) will now not be utilized to defeat the later-filed application. Further, it does not subtract from the twenty year term of the later-filed application unless it is truly converted as discussed below.

While patent attorneys often speak of “converting” a provisional into a non-provisional, this is not usually an accurate description of the case (with a single exception), since the provisional has no life beyond its twelve-month term and “converting” is usually done by filing a non-provisional application that claims benefit of the filing date of the provisional. Thus, the provisional is primarily a means for delaying the filing of a non-provisional patent application, while still getting benefit of the earlier filing date of the provisional. (The single exception as to “converting” is that a provisional patent application can be truly converted with an extra processing fee if it has a least one claim, or is amended to contain at least one claim, but this process is rarely done, since now the term of the resulting non-provisional will be twenty years from the date of the provisional filing, thereby losing a year.)

A provisional patent application requires a full written specification and all the drawing figures, but does not require claims. It is never examined (unless truly converted) other than to ensure that the proper papers are present.

Lastly, a provisional patent application never sees the light of day and remains confidential, unless a non-provisional patent application (or a Patent Cooperation Treaty application — to preserve foreign filing rights — or a design application) takes priority to it.

For more information on provisional patent applications, see Provisional Patent Application.

Non-provisional

A non-provisional patent application, sometimes called a “regular” patent application or just a “patent application”, is a “real” application for a patent. It will be examined, and ultimately, through the examination process can mature into a patent. It’s “term” or life ends twenty years from the earliest priority date, which may be the date it is filed or the date that an application from which it takes priority benefit is filed. (See above for the effect of a provisional priority date.)

A complete non-provisional patent application contains at least a specification, all the drawing figures and at least one claim. Claims are the invention. The specification and drawings must disclose what is in the claims, but they do not comprise the invention, only the claims do. Twenty claims are paid for with the filing fee, of which three may be independent claims. (Independent claims stand alone. The remaining are dependent claims which refer to another claim and thus cannot stand alone.)

There are various types of non-provisional patent applications, including the “parent” application and such “children” as divisional patent applications (occasionally the United States Patent & Trademark Office (USPTO) examiner requires restriction between more than one invention in the patent application; after proceeding with one selected invention, the other or others can be filed as divisionals), continuation patent applications (typically only a new set of claims to the original invention) and continuation-in-part patent applications (the original patent application plus some new matter added — this is the only way to add new matter to a patent application).

For more information on non-provisional patent applications, see Non-provisional Patent Application.

Which Costs Less

Many people think that a provisional patent application is less costly way to get a patent than a non-provisional patent application. However, this is not the case.

Again, because the provisional expires and a non-provisional must be filed to take priority to the provisional, this two-step process is more expensive. It is true that a provisional patent application is the least expensive way to get “Patent Pending” status, but that will expire after a year unless the non-provisional is filed within that time.

Further, in order to be fully enabling and not just a waste of time and money, the provisional must contain everything that a non-provisional would include except the claims. That constitutes about ninety percent of the cost of a patent. Later, the non-provisional that is filed taking priority to the provisional will cost about twenty to thirty percent more. Thus, the provisional route is the more expensive route to obtaining a patent.

Notwithstanding, as noted below, there are sometimes good reasons to file a provisional patent application and incur the additional costs.

How to Select

When to use a provisional

There are at least two good reasons to file a provisional patent application:

1. When an invention is fully definable, but will likely require further improvements that can be accomplished within a year, that is a good time to file a provisional patent application on the existing invention. The key is that the improvements must be completed within a year so that the non-provisional can be filed with the improvements during the pendency of the provisional so that priority as to the matter of the original invention defined in the provisional can be taken before the provisional expires.

2. On occasion, someone has an invention that they merely want to sell or license and are certain that they will have found someone to buy or license within the one-year pendency of the provisional patent application. Alternately, if they do not find someone, they plan to let the provisional patent application expire without filing a non-provisional patent application and incur no further expenses.

When to use a non-provisional

Pretty much any other reason than those two above will be a good reason for filing a non-provisional. Namely, if you want to get a patent and reason 1 above doesn’t apply, you should immediately file a non-provisional patent application and get the process going.

Alma
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India Patents (Amendment) Rules 2006 Notified

George Kutty asked:




The Government of India has notified Patents (Amendment) Rules 2006 with effect from 5 May 2006. The Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, has issued a Notification dated May 5, 2006, published in the Gazette of India.

The Rules, necessitated by the third amendment to the Patents Act, are major steps towards developing a comprehensible intellectual property rights regime in India. It simplifies patent filing, examination, search and grant procedures, and establish time-bound pre-grant and post-grant opposition procedures. This step follows introduction of product patents in line with India’s commitment to the World Trade Organisation(WTO).

Minister of Commerce Kamal Nath while commenting on the recent amendments to the Patents Rules said that it represents a major step forward to develop a vibrant and user-friendly intellectual property regime in India which would facilitate as well as encourage innovation and creativity.

As per the changes notified patent applications are now be compulsorily published within one month after expiry of the statutory period of 18 months and, in case of request for an early publication, the application should be published within one month from the date of request. This move will introduce an element of certainty concerning the date of publication, which was, till now, not available.

So as to make the system more user-friendly, definitive time frames have also been prescribed for various functions by the patent offices. Accordingly patent application has now mandatory to be referred to an examiner within one month of filing of a request for its examination and the controller has to take a decision on the report of the examiner in one month of its submission. Further, the ‘first examination report’ must be issued in six months of the date of request for examination of a patent application. The time for granting permission to file patent applications abroad has also been reduced to just 21 days.

The timelines available for applicants and the public have also been extended. The time frame for making a request for examination has been extended from 36 to 48 months while the time for filing a pre-grant opposition extended from three to six months and time for meeting the requirements of the First Examination Report increased to 12 months.

The patent administration is also decentralized. Earlier applications under certain provisions of the Act could be filed only at the head office in Kolkata. Now these provisions have been removed and all applications can be filed at any branch offices at Kolkata, Delhi, Mumbai and Chennai.

Manuel
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Patenting – An Overview For New Inventors

Stephen Szirmai asked:




If you are serious about an idea and want to see it turned into a fully fledged invention, it is essential to obtain some form of patent protection, at least to the ‘patent pending’ status. Without that, it is unwise to advertise or promote the idea, as it is easily stolen. More than that, businesses you approach will not take you seriously – as without the patent pending status your idea is just that – an idea.

1. When does an idea become an invention?

Whenever an idea becomes patentable it is referred to as an invention. In practice, this is not always clear-cut and may require external advice.

2. Do I have to discuss my invention idea with anyone ?

Yes, you do. Here are a few reasons why: first, in order to find out whether your idea is patentable or not, whether there is a similar invention anywhere in the world, whether there is sufficient commercial potential in order to warrant the cost of patenting, finally, in order to prepare the patents themselves.

3. How can I safely discuss my ideas without the risk of losing them ?

This is a point where many would-be inventors stop short following up their idea, as it seems terribly complicated and full of dangers, not counting the cost and trouble. There are two ways out: (i) by directly approaching a reputable patent attorney who, by the nature of his office, will keep your invention confidential. However, this is an expensive option. (ii) by approaching professionals dealing with invention promotion. While most reputable promotion companies/ persons will keep your confidence, it is best to insist on a Confidentiality Agreement, a legally binding document, in which the person solemnly promises to keep your confidence in matters relating to your invention which were not known beforehand. This is a reasonably secure and cheap way out and, for financial reasons, it is the only way open to the majority of new inventors.

4. About the Confidentiality Agreement

The Confidentiality Agreement (or Non-Disclosure Agreement) is a legally binding agreement between two parties, where one party is the inventor or a delegate of the inventor, while the other party is a person or entity (such as a business) to whom the confidential information is imparted. Clearly, this form of agreement has only limited use, as it is not suitable for advertising or publicizing the invention, nor is it designed for that purpose. One other point to realize is that the Confidentiality Agreement has no standard form or content, it is often drafted by the parties in question or acquired from other resources, such as the Internet. In a case of a dispute, the courts will honor such an agreement in most countries, provided they find that the wording and content of the agreement is legally acceptable.

5. When is an invention fit for patenting ?

There are two main aspects to this: first, your invention should have the necessary attributes for it to be patentable (e.g.: novelty, inventive step, potential usefulness, etc.), secondly, there should be a definite need for the idea and a probable market for taking up the invention.

6. About patents.

Patents are documents which publicly and fully disclose an invention and, if properly designed, will provide the inventor legal protection against unauthorized use (note: a Confidentiality Agreement is a personal disclosure, while a patent is public disclosure). Patents can be bought and sold, so that the owner of a patent may not be the inventor. Also, it is possible to retain the patent while selling the right to use it. This is the meaning of the phrase : ‘manufactured under license’.

The following are the main patent types:

o Provisional Patent Application

o Final (Utility) Patents

o Design Patents

o Plant Patents

o International Application *

* The so-called International Applications (or PCT applications) are applications for Utility Patents simultaneously in several countries. There are certain savings compared to making separate applications in taking out individual patents for the countries in question, but the result is the same, the applicant ends up with individual patents for each of the countries in question and has to pay the individual patenting and renewal fees. There is no such thing as an International Patent
A few of the above patent types will be briefly discussed:

7. What is a Provisional Patent?

It is a simplified version of a final (or Utility) patent and offers you complete international priority protection for 1 year. After that, you must proceed to the final patent, or you will lose the protection gained from the Provisional. The Provisional Specification is the cheapest form of total legal protection around the world and was designed with starting-out inventors in mind. An important aspect of a provisional patent is, that on lodging it with a patent office it will stay ‘dormant’ and will not be examined until there is a legal challenge, e.g.: someone patents a similar invention and there is doubt which of the two were first. Here is an important point: on examining the two patent documents, it sometimes happens that the earliest applicant loses out due to the poor way his Provisional is written. While it is perfectly legal to write and lodge your own patents in order to save on the cost of preparing it (you would still have to pay a lodgment fee), it is generally a very foolish thing to do, as you will not be sure whether your invention is protected or not. This goes for both Provisional and Final patents. While it is not essential to lodge a provisional specification, as you are entitled to go for the final patent straight away, this is not usually recommended.

The advantages of this type of patent procedure are as follows:

(i) a provisional specification allows you to modify it within the one-year period, without affecting its validity. This is very convenient as it allows one to protect the invention while it is still developing. This is not possible with the final patent.

(ii) the Provisional Patent Application provides priority protection Internationally for one year, this aspect is superior to other types of patenting which only apply for a specific country.

(iii) the provisional patent application allows for a ‘breathing space’ – a full year to look around for a potential backer, someone who may even be prepared to pay for the final patenting.

(iv) There are considerable savings, as the Provisional Patent Application costs 10 to 12 times less than other forms of patenting.

When contemplating this form of patenting, it is advisable to turn to agencies experienced in this type of procedure (for instance http://www.newinvent.com)

8. About the Final Patent (‘Utility Patent’)

This is the final unchangeable form of your invention. Most usually, it will have a formal structure involving such things as background literature, disclosure of invention, claims, embodiments, practical examples for use, detailed figures and drawings, etc. It will protect your invention for 20 years from the date of filing and you will get a formal Patent Document once it has been fully examined and accepted. Usually, it takes from 12 to 18 months to obtain a final patent after application. It is approximately 10 to 12 times as expensive to prepare as a provisional patent and has to be taken out for each country separately, which makes it a very expensive process, as lodgment fees must be paid in each case. It becomes especially expensive if protection is sought. In more then one country. Therefore, a final patent should only be taken out where it is highly warranted, e.g.: when someone wants to develop your invention and would like to buy the patent rights.

9. Following the Patent Procedure

After a patent protection was obtained, whether in the form of a Utility Patent or a Provisional Patent Application, it is advisable to advertise it as widely as possible in order to make it stand out from the large body of currently valid patented inventions (some 50 million at present). The web site “Patent Showcase” as well as other agencies specialize in this and will be able to advise once this matter comes up.

Author: Dr. Stephen G. Szirmai

ivnet@yahoo.com

Roy
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