When Should I Convert My Provisional Patent Application to a Non-Provisional Utility Patent?

I usually get asked the question: If I rush to convert my provisional to a non-provisional patent filing, does that reduce the risk of someone having a third party receiving a patent on the same subject matter?

Typically, there is NO rush in filing the non-provisional utility patent application once you’ve already secured a provisional patent application. Whether you file the non-provisional patent application the next day or 11 months and 20 days from the priority date established by the provisional, your patent priority rights will be the same.

In fact, the long your wait, the longer your effective patent coverage may actually be. Consider that a utility patent grants the inventory rights to exclude others from making, using, and selling the patent invention for a period of 20 years after the non-provisional patent filing date. So, if you have a priority date 1 year prior to the non-provisional filing date, that creates an effective patent priority of 21 years.

But there’s a catch to waiting – Warning: The longer you wait to convert your provisional patent application to a non-provisional, the greater the potential of someone obtaining a patent on the same subject matter as you – even if you have an early patent priority date established by your provisional patent filing.

Here is why: consider that a provisional patent application is never disclosed to the public. It’s kept confidential by the USPTO, and not even patent examiners assess provisional patent applications when they examine non-provisional utility patent applications.

This means that, while you are ‘patent pending’ with a patent priority date secured by a provisional patent filing, another applicant may apply for a non-provisional patent. In some instances, the patent examiner may begin examining their patent application while your provisional patent is still pending under confidentiality. This means that your provisional patent application may not be used as prior art against the subsequent patent filer. In turn, the subsequent patent filer may be granted a patent, even though you had an earlier filed provisional!

Correcting this is an up-hill battle and the subject of a different article.

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.

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LLC or Corporation: What Is Best for Your Startup?

The most significant difference between an LLC and a Corporation is in a) structure and b) governance.

Generally speaking, the way a Corporation is structured and run is well-defined, with little room for variance. An LLC is structured and run by contract between the LLC and its owners (the Members), which makes it very fluid and adaptable.

A Corporation is very rigid – the way in which it is set up and run is defined by law and practice, so there is little room to change things. The benefit of a rigid structure is predictability – everyone involved (investors, lenders, advisors, employees etc.) knows exactly how a Corporation works. This rigid Corporate structure is also highly scalable.

An LLC, however, is a much newer type of entity, and it is designed to be very flexible. The state laws and rules that define LLCs are typically very broad – and purposefully so to allow for variation.

The LLC can be structured, governed and taxed exactly like a Corporation, but can be set up for the Members (owners) to run the LLC directly, without a board. The roles can be defined by contract (Operating Agreement) between the LLC and its Members.

The obvious benefit is that an LLC can be tailored to meet the exact needs of a specific business. There is however, a drawback: Since the baseline laws are broad, the governing documents must be very well done to avoid nasty surprises.

The most important document in an LLC’s toolbox is the Operating Agreement – which is the contract that defines how the company is run.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Andrei Tsygankov is the Co-Founder and COO of SmartUp® and a partner at Founders Legal (Bekiares Eliezer LLP). As an attorney, Andrei specializes in corporate, commercial, trademark, and international business matters.

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Can I Get a Patent on My Idea?

Any person who has invented or discovered a new and useful process, machine, article of manufacture, or composition of matter may obtain a patent for it. This also includes any new or useful improvement on a past invention. Laws of nature and theories are not patentable. You do not need to have actually constructed or used your invention to get a patent on it. Having a good idea of how your invention is made and used is sufficient.

In general, the basic principles of patentability could be based on two questions:

Is the invention useful? and Is the invention new?

You may obtain a Patentability Opinion from a Patent Attorney who will determine if you’re your invention qualifies for patent based on the nature of its subject matter and its comparison to a Prior Art search.

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.

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How to Avoid Public Disclosure

When you intend on discussing your invention in depth with a third party, make sure they agree to keep the content of your discussion confidential. Also consider having them sign a non-disclosure agreement drafted by a Patent Attorney. If you are sending emails or documents containing descriptions of your inventions, be sure to label all emails and documents as “confidential.”

Keep negotiations to sell your invention to third parties on a preliminary basis until you file for a patent or provisional patent. Estimates ñ such as quoting price estimates, quantity estimates, and delivery time estimates ñ are not a problem so long as the third party has the understanding that it cannot submit an order for the item immediately.

Provide your patent attorney with sufficient advance notice before disclosing or offering to your idea or offering to sell. The Patent Attorney will be able to advise you that, for example, although the US allows you to make public disclosures within a grace-period before filing for patent (12 months), many foreign countries will prevent you from obtaining a patent once a disclosure or offer to sell is made anywhere in the world. Whenever a disclosure or offer to sell your invention is made, contact a patent attorney, as soon as possible, so that you can intelligently decide to file a patent in the U.S. before the one year deadline.

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.

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What Are the Dangers of Publicly Disclosing My Idea?

You have exactly ONE year from the date your invention is publicly – disclosed, used, offered for sale – to file a provisional or non-provisional patent.  If your idea has been exposed to the public and you don’t file for a patent within ONE year from the date of public exposure, you may be forfeiting your patent rights.  Moreover, by publicly disclosing your idea, you risk someone misappropriating your idea and claiming your idea as his or her own.  Though there are ways to prevent misappropriation, they are difficult and expensive.  This is why publicly disclosing your idea before at least filing for a Provisional Patent is not recommended.

For more information read about the definition of public disclosure.

 

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.

yuri

What Is a Public Disclosure of My Idea?

Exposing of your idea or invention to the public more than 12 months before you file for patent protection may prevent you from obtaining patent rights to your idea or invention. There a number of ways you could have disclosed your invention to the public in the legal sense – the examples shown here only illustrate a few of those ways. Particularly, the United States Patent and Trademark Office is interested to see if you have publicly 1. disclosed, 2. used, or 3. offered for sale the version of your invention that you are attempting to patent.

What is a public disclosure?

Publishing an article or blogging about your invention – in enough detail such that the reader would be able to make and use your invention based on what he learned from the reading – would be a considered public disclosure. Giving a presentation about your invention at an event open to the public in such detail would be considered a public disclosure as well.

What is a public use?
Using your invention in an area open to the public would be considered a public use. For instance, if you invented a “hovering skateboard” and used it on the public city streets, this would constitute a public use. Premiering your invention at an event open to the public would also be considered a public use.

What is an offering for sale?
When you offer to sell your invention to the public, it is considered an offering for sale. If it was done in private, then it may not be considered a public offer. Discussing the sale of your invention, or entering into negotiations to sell your invention, is not necessarily an offer to sell it.

The Experimental Use Exception
The USTPO does not treat experimental use as public disclosure. For instance, if you are testing your invention out in the presence of the public such use would not be considered a public use if the people present were aware they were witnessing an experiment. There are many exceptions to this rule and is highly advised to contact a Patent Attorney prior to publically testing your invention.

The Attorney-Client Privilege
Discussing your idea with a Patent Attorney is not considered a public disclosure. Similarly, submitting your idea to SmartUp® is not considered a public disclosure.

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.

yuri

How Do I Convert My Provisional Patent Application into a Non-Provisional Application?

An applicant who files a Provisional Application for Patent must file a corresponding Non-Provisional Patent Application within 12 months to benefit from the priority date of the provisional filing. The corresponding Non-Provisional Patent Application must specifically refer to the Provisional Application.

For instance, the non-provisional patent application would contain a paragraph reciting “The present applications claims priority to the earlier filed provisional application having serial no. XX/XXX,XXX, and hereby incorporates subject matter of the provisional application in its entirety.”

The USPTO will then compare the Non-Provisional Patent Application with the earlier-filed Provisional Application. If the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the applicant the provisional application’s earlier filing date for any patent that issues.

Alternatively, an applicant can convert a Provisional Application for Patent to a Non-Provisional Application. This option saves the applicant little effort, however, and virtually no money. Furthermore, the Provisional Application’s filing date is lost and the filing date for any patent that issues will be the date of conversion.

To better understand this concept, we must consider that a patent expires 20 years after its filing date. If you file your non-provisional patent application on Jan. 1, 2000, then it will expire on Jan. 1, 2020. Now let’s consider the following scenario – you had filed a provisional application on Jan 1, 1999 and then filed a non-provisional on Jan. 1, 2000, claiming priority to the provisional filing. Your non-provisional filing will be examined with the priority date of Jan. 1, 1999, but your patent protection (if granted) will expire 20 years after the filing of the non-provisional application (Jan. 1, 2020). Yet, if you decided to convert your provisional into a non-provisional application, you would only be eligible for patent protection through Jan. 1, 2019. In essence, the year of provisional protection does not count against your 20 year period of patent rights.

So why would anyone want to convert the provisional filing to a non-provisional? The question can be answered when considering public disclosure. A non-provisional application must be filed within one-year of the inventions public disclosure. Let’s analyze this scenario with an example. If you publically disclose your invention on June 1, 1999, then file a provisional on Jan. 1, 2000, you have until June 1, 2000 to file a non-provisional patent application. Even though provisional patent protection lasts through Jan. 1, 2001, it would be too late to file a non-provisional application at that point. So, if it is now June 2, 2000, you can no longer file a non-provisional patent application since you had disclosed your invention more than a year ago. In this case, you should convert your provisional into a non-provisional filing ñ since it will retroactively apply your provisional filing date to your non-provisional conversion date!

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.

yuri

How Long Does a Provisional Patent Protection Last?

The USPTO gives you one year to convert your provisional patent to a formal patent. If you do not convert your provisional patent to a formal patent, your provisional patent protection simply expires. If you are still not ready to file for a formal patent after the one-year period, you can renew your provisional patent protection by simply refilling for a provisional patent – if and only if you haven’t publically disclosed the subject matter of your provisional more than 12 months prior to the re-filing date. However, you will only be allowed to claim priority to the date of filing for the non-expired provisional patent.

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.

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What if I Disclosed My Idea before Filing for a Provisional Patent or Formal Patent?

The USPTO allows you one year from the date of your first public disclosure to file for patent or provisional patent on your idea. This one-year period is known as the ‘grace period’. If you do not file for a patent or provisional patent within one-year of your first public disclosure, you will have been deemed to have legally abandoned your patent rights to the idea. When considering a public disclosure, keep in mind most countries don’t give you this one-year grace period – you will have forfeited your patent rights in those foreign jurisdictions upon your first public disclosure.

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.

yuri

How Long Does It Take to Get a Patent?

“On average, it takes 2-1/2 years to complete the application process for a patent in the U.S., according to data in the infographic generated by online patent law service SmartUp. Mechanical engineering patents are likely to take longer, with average wait times clocking in at almost 33 months.” -Entrepreneur Magazine

Earlier this year we put together an infographic that goes over the most commonly asked questions about patents that was published on  Entrepreneur Magazine .This infographic describes the IP landscape in the wake of the new 2013 America Invents Act. The image illustrates the increase in patent applications filed from 2008-2013, as well as shows where the majority of these patents are coming on global, US, and individual levels. It also includes a segment that details the corporate players in the patent game, specifically which companies, government agencies, and universities are filing the most patents. The graphic then continues to layout the time frame for actually obtaining a patent, and provides information about which industries have the longest waiting period. Time will tell what effects the new legislation will have on the data presented.

 

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