I have a provisional patent filed, and I am speaking at a Conference about my invention. However, at the conference, I intend to disclose new features that aren’t covered by the provisional patent. Big companies, including competitors, will be at the conference. What should I do?
To the extent that you will be disclosing, at the conference, subject matter that was not originally covered in the first provisional patent, you will be 1) forfeiting your international patent rights to that un-covered subject matter, 2) you risk misappropriation of your uncovered subject matter to the competitors; and 3) keep in mind, we have a ‘First-to-File” patent system – if someone else files a patent on your uncovered subject matter before you do, it will be an uphill and costly battle for us to prove that the patentee derived the invention from your public disclosure.
To resolve this issue, I would recommend another provisional filing on the new subject matter. A patent attorney can do this for you at a reasonable fee. Then, when we’re ready for the non-provisional – you can claim priority to both of the provisional filings. This is a very common strategy for incremental improvements prior to the ‘final product’.
Please keep in mind – I am a patent attorney and am advising you as to the legal implication of your questions. The ‘Business’ decision should take into account other factors – including budget, risks, and rewards. In other words, I will advise you on how to move forward in a legally ‘sound and secure’ way – but I am only considering the legal implications and no other implications.
If you are interested in more detail related to your situation it is best to speak with an attorney.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.