Covering Your Ass, Part 3

May 30th, 2008 Chris Posted in Intellectual Property | No Comments »

So, we’ve talked about NDAs and patents – now let’s explore one of the most important aspects of the patent system to the micro business. The Provisional Patent Application is a way of protecting your invention without having to immediately go through the process and cost of drafting full patent application complete with all it’s archain features.

Drafting a Provisional Patent Application is much simpler – in fact it was specifically introduced by the US Patent and Trade Office in the 90′s to make it easier for inventors to go down the patent road. There are no specific format requirements and no need to draft specific claims (a critical feature of a full patent application). You just really need to describe your invention in detail.

Once you’ve submitted your Provisional Patent Application, your idea is protected, but only for 12 months. You have one year to file your full Patent Application after your provisional application is received. Unless you do so, you will lose your claim to the invention.

Why is this approach beneficial? For the micro business, this is very attractive. You can take your new great idea and protect it without all the cost and time of the full patent process for 12 months. In this time, you can fully explore it’s market potential: building prototypes/betas, talking to potential partners, seeking investors, etc… And you can go around citing your invention as “patent-pending”.

If, at the end of the 12 months, you determine your idea is a winner – then you can submit the full patent application and it’s effective date (the date from which your invention is protected) will be when you submitted the Provisional Patent Application.

And the good news is that you can draft your own Provisioning Patent Application. It is relatively straight forward. In fact, I just mailed off my own earlier this week. Unlike the telephone book size of many full patent applications, my provisioning application was just eight pages…

In the process, I found a couple of great resources to help:

• Patent Pending in 24 Hours. This book provides a great overview of the patent process and a step-by-step guide to drafting your Provisional Patent Application. The book also has other IP-related forms that you can use, like an NDA.
• Patent Wizard. This software walks you through drafting your provisional application. And, as a cheap bastard, you can use it for one application per month for free.
• USPTO. The U.S. Patent and Trade Office doesn’t have the best looking web site but it is packed with information that’s easy to read and doesn’t require you to be a lawyer to understand.

So – go ahead and protect your invention with a Provisional Patent Application. It’s easy and as long as you remember to file you full patent application within a year, you will be protected. Remember, your protection is based on the assumption that your patent will ultimately be granted. If it’s rejected by the patent office then you have no protection. So, someone could steal your idea and, five years later when the patent office rejects your patent, you will have no recourse.

And someone doesn’t have to steal it outright, they could change one part (often called a work around) and cite it as a different invention (read the part about alternative embodiments carefully when drafting your application). That’s one reason why I highly recommend never disclosing your invention, even with the protection of a Provisional Patent Application, unless you need to. And having an NDA is always a good idea.

Here endeth the patent stuff.

C.