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Why Should I Get a Provisional Patent?

A provisional application for patent is the most cost effective way to begin protecting your invention. It establishes your priority to the patent rights for your invention while you put the finishing touches on it, work up your non-provisional patent application, seek funding and do market research.

With a provisional application on file, you can feel safe promoting your invention. Having a provisional application on file also means that you can disclose your invention with everyone on notice that your invention is “patent pending.” Best of all, provisional applications are not published or disclosed by the USPTO so your invention’s secrecy is never compromised.

Provisional applications are less expensive and easier to file than non-provisional patent applications, can be done quickly, and should be done in advance of an invention’s public disclosure (although following a disclosure is still useful). Most importantly, filing a provisional application establishes an official filing date with the USPTO. Having the early filing date with the USPTO is the most important determinant in our new “First-Inventor-to-File” patent system.

Plus, if you significantly improve or change your invention after filing your provisional application, you can simply file a subsequent provisional application with the changes and improvements. Due to the low cost of the provisional application, it is economically feasible to continue to file provisional for each improvement to your invention. Then, when you are ready to pursue the non-provisional, you can combine the multiple provisional applications into the non-provisional application, as long as your first provisional application sufficiently details the invention that ultimately appears in your non-provisional application, leaving you eligible for your earliest filing date.

Most importantly, provisional applications aren’t expensive or resource intensive. This means that, if you decide not to move forward with a non-provisional and your provisional expires (1 year after filing), you didn’t lose much time or money. Best of all, your invention was never disclosed to the public since provisional application filings are kept confidential by the USPTO.

 

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’s the Difference between a Provisional Patent and a Non-Provisional Patent Application?

A patent grants an inventor rights to exclude others from making, using, or selling the idea claimed in the patent for a period of 20 years. A non-provisional patent application begins the examination process to determine if an idea is eligible for patent grant. This examination process (known as “Patent Prosecution”) can be long, highly technical, and expensive.

A Provisional Patent legally establishes the date from which an inventor claims priority to any potential patent rights for his or her idea. Though it begins the “Patent Pending” process, it does not begin the examination process, nor does it grant the inventor a right to exclude others from making, using, or selling his or her idea. Rather, a Provisional Patent is a quick and inexpensive means for an inventor to claim patent priority to his invention. This is important since the first inventor to file his idea with the USPTO wins the priority to the patent rights for the idea! Moreover, it provides an inventor with time to decide whether or not he would like to pursue the more resource intensive endeavor of Patent Prosecution for formal Patent grant.

When the inventor decides to begin the Patent Prosecution process, he must convert his provisional application for patent to a non-provisional patent application. The USPTO treats the filing date of the inventor’s provisional application or patent as his priority date for the examination process of the subsequent non-provisional patent application. A provisional patent application is the only legally recognized means by which an inventor can establish a priority date that is earlier than the filing date of his or her non-provisional patent application.

During the Patent Examination process of a non-provisional application, your patent attorney advocates your patent rights to the USPTO and persuades the Examiner, under a strenuous proceeding that has 1000 pages of rules (not exaggerating!), to grant you a patent on the application. The Examiner then decides whether or not to grant you a patent. If they Examiner declines, then your patent application goes ‘abandoned’. If the Examiner believes your invention is novel and non-obvious (inventive), then you’re granted a patent. There are appeal procedures in place to contest the Examiner’s patentability opinion.

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 Is the Quickest Way to Get Patent Pending Status?

A USPTO provisional patent application simply secures your ‘spot in line’ or patent priority date for a patent for one-year under “patent pending” status. After you file a provisional application, you will have one-year to follow with a non-provisional (full) patent application to maintain your patent priority date. It’s important to secure your patent priority date, as the inventor with earliest patent priority date will be the only one to win any potential patent rights to an idea.

Provisional Applications are typically cheaper than non-provisional applications since they do not require the many formalities of a non-provisional patent application. Moreover, they are never disclosed to the public by the USPTO. This is why they are good tool for inventors who are still developing their idea. Having a provisional patent secured, the inventors can be confident that they have established a patent priority and can begin to disclose their invention to investors and developers who may help them further expand and realize their invention.

 

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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When Should I File a Non-Provisional Patent Application?

You do not need to have realized, developed, implemented the subject of a patent application in order to be granted patent protection.  Many inventors and companies file non-provisional patent applications on simple ideas and they are awarded patents.  The USPTO, or most any jurisdiction of the developed world, does not require that the subject of the patent is developed or brought to reality.  This enables the inventors and companies to patent their ideas and the license out the patent rights to entities that will develop the idea, collecting royalty.  Unfortunately, this may result in Patent Trolls and Patent Trolling.  Sometimes, it’s wise to start with a provisional patent filing on an idea will you expand upon your idea. Follow the link for the reasoning.

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 Is a Provisional Patent Application?

A Provisional Patent legally establishes the date from which an inventor is entitled patent protection to his or her idea (known as the ‘priority date’) and allows the inventor to describe the idea as “Patent Pending.” Filing a provisional application for patent (commonly known as a Provisional Patent) is the first step in securing patent rights to your idea, invention, or innovation.

When the United States Patent and Trademark Office (USPTO) is deciding whether or not to grant you a patent on your idea, your priority date serves as a legal basis to answer the question of “Who came up with this invention first?” The inventor with an earlier priority date is the only inventor who may be entitled to a Patent on the idea, so it is important to file a file for Provisional Patent protection as soon as you can.

Provisional Patent protection was established to provide inventors an inexpensive way to begin protecting their ideas. With a Provisional Patent, the inventor can feel secure in disclosing and promoting his idea as “Patent Pending” knowing that he or she has already established priority with the USPTO to their patent rights for the idea. In this way, the inventor knows that, if anyone else were to try to misappropriate the inventor’s idea, he or she will have the means to prove that he has legal priority to the idea.

 

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 Is a Patentability Opinion?

A Patentability Opinion provides you a Patent Attorney’s professional determination of the likelihood your idea, invention, or invention will be granted patent. The Patent Attorney first performs a Patent Search and then applies legal standards and case law for Patentability to determine if your innovation may be patentable in view of the patent search results.

It is important to note that the Patentability Opinion, as its name suggests, is only the professional opinion of a Patent Attorney. The United States Patent and Trademark Office is the sole entity that will decide whether your idea will be granted a Patent in the United States a Patent can never be guaranteed by any Patent Attorney. Patent Pending, however, can be guaranteed.

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 Is the Enablement Requirement?

Code section 35 U.S.C. 112, known as the Enablement Requirement, reads:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

As this rule pertains to Provisional Patents, the description of the invention must only meet two requirements:

1. The inventor must describe how to build and use the invention in enough detail such that ‘one of ordinary skill in the field of the invention’ would be able to recreate and use the invention based on the description, and
2. The inventor must disclose the best way he knows how to build and use the invention.

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 Can I File a Non-Provisional Patent on My Idea?

In order for an invention to be granted a patent, an inventor must disclose and claim his invention in a patent application filed to the United States Patent and Trademark Office (USPTO). Properly describing and claiming an invention in a patent application is a highly technical legal practice with a vast amount of formalities and filing requirements.

The three primary requirements for a patent application are as follows:

1. The inventor must describe how to build and use the invention in enough detail such that ‘one of ordinary skill in the field of the invention’ would be able to recreate and use the invention based on the description,
2. The inventor must disclose the best way he knows how to build and use the invention,
3. The inventor must clearly and concisely claim what he represents to be his invention, and
4. The inventor must include figures and drawings that illustrate what he claims as his invention.

The filed patent application must then undergo a stringent examination process at the USPTO. This process is tedious, long, and costly. If an inventor files for patent, but does not have the resources or understanding to comply with the examination procedure, he may risk legally abandoning the rights to his invention.

An examiner at the USPTO will determine if the invention claimed in the patent application is patentable. If the examiner rejects an application for patent, the inventor is offered opportunities to amend his claimed invention or argue against the examiner’s rejections. The examiner, in turn, reviews the amendments and/or arguments and may either maintain his rejections or allow the patent application to issue as a patent. If the examiner maintains the rejections, the inventors may continue to amend their claimed invention, argue against the rejection, or appeal the rejection to a federal Board ñthis cycle may repeat indefinitely (so long as the inventor is willing to pay the continuation fees!).

Should the examiner deem the invention to be patentable, the inventor is granted a certificate of patent and his invention is published in a formal patent document, thereby placing the public on notice of the inventor’s patent rights.

This broad overview of the patenting process excludes the many paths and intricacies in obtaining a patent. It is highly discouraged that an inventor attempt to patent his invention on his own.

To better understand if your idea qualifies for a non-provisional patent take advantage of SmartUp’s free consultations with a patent 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 Do I Disclose My Idea?

As you may know, our patent laws changed last year – the law now gives patent priority to the first person to file a patent application on an idea. Before, the law allowed inventors to prove the earliest date that they conceived an idea (in this way, even if the inventor wasn’t the first to file a patent application on his idea, he could submit evidence of conception dating back before the earlier patent filer). Unfortunately now, in order to preserve your patent rights, you must be the first one to the patent office with your idea.

So, for those who are serious about pursuing their idea, it is my recommendation to file at least a provisional patent application before beginning any public disclosures. The USPTO (Patent Office) created the provisional patent application for inventors to easily and quickly obtain “patent pending” status. In turn, the provisional application serves to secure their spot in line for the patent rights to their idea for 1 year. During that one year period, the Patent Office never discloses your idea to the public – it simply saves your spot in line for a full non-provisional patent application. Within that 1 year, the inventor must follow with a non-provisional application or lose his spot in line.

Provisional Applications are relatively cheap to secure. We charge from $600-$1500, depending how much support you need from us. The provisional application gives you the peace of mind to go about promoting your idea, obtain partners and investors, and give your idea a trial run – knowing that your spot in line for the patent rights are secured.

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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The Importance of a Provisional Filing with the New Patent Laws

Our new patent laws grant the first inventor to file for a patent priority to any patent rights available to that invention. Before, our laws allowed an inventor to prove his date of conception to gain priority to the patent rights, even if the inventor was not the first to file for a patent on the invention. Now, the only factor that is considered when granting priority to patent rights is the filing date of the inventor’s patent application. The inventor with the earlier filing date wins the rights to the patent, even if another inventor can prove that he or she came up with the invention first.

In view of our new patent laws, provisional patent filings have become the primary way an inventor can prove he or she was the first to come up with an invention without actually going through the expensive patenting process. A provisional application for patent serves as an official notice to the Patent Office to hold the inventors place in line for a patent. From the filing a provisional patent application, the inventor has one year to follow with a formal, non-provisional filing not to lose his or her spot in line. During that one year period, the inventor can continue to work on improving the invention, gain investment, and best of all, promote the invention as “Patent Pending” without fear of someone else filing for his or her patent rights.

The provisional patent application was created as an inexpensive means to reserve patent priority to the invention while, for example, accumulating the resources to file for a formal non-provisional patent. With the new first-to-file standard, corporate entities have the economic resources to quickly file for patent protection. A provisional filing puts the startup/solo-inventor on equal ground.

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 Is the America Invents Act (AIA) – Patent Reform?

With the passage of the “America Invents Act” (AIA), the United States government has decided to conform its patent laws to the international “First-to-File” standard. Essentially, this standard awards the inventor who first files his idea or invention to the United States Patent and Trademark Office (USPTO). As long as the innovation was not previously published or otherwise made available to the public by anyone else, this first-filer gets priority patent rights to the innovation.

On March 16, 2013, the Leahy-Smith America Invents Act (“AIA”) switched U.S. Patent Law to a “First-to-File” standard. From that point forward, the United States Patent and Trademark Office (USPTO) no longer recognizes inventors who were the first to conceive of their idea or invention, but were not the first to file a patent application to the USPTO.

For instance, before the enactment of the “First-to-File” standard, an inventor could take his time to experiment and further develop his idea before filing for a patent. So long as the inventor kept good dated records of his progress prior to patent filing (known as the “Poor Man’s Patent”), the USPTO would allow the inventor to use these records to back date his invention’s priority date. In this way, even if another inventor filed for a patent on the same idea before the first inventor could do the same, the first inventor would be allowed use his dated records to prove his earlier conception of the invention.

The AIA no longer recognizes the “Poor Man’s Patent”. Since first inventors (though not first patent-filers) are no longer be granted protection by the new “First-to-File” standard, all inventors are encouraged to file for patent or provisional protection as soon as they can. Fortunately, the patent filing fees for solo inventors and startup entrepreneurs have been tremendously reduced. Nevertheless, Patent Attorney’s fees have remained the same. It is for these reasons that SmartUp®, in conjunction with experienced Patent Attorneys, created an affordable platform to secure a priority date for inventors.

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 Is a Patent?

A patent is a document that discloses an invention to the public. In exchange for disclosing the invention to the public, the U.S. government grants the inventor rights to exclude others from making, using, or selling the invention claimed in the patent for a period of 20 years.

There are a few types of Patents: Utility Patents, Design Patents, and Plant Patents. Utility Patents protect “new and useful” inventions or discoveries, while Design Patents protect “non-functional, ornamental designs”. Plant Patents protect man made genetic variations of plants and their seedlings. Most inventions and discoveries are protected as Utility Patents.

Still not sure if your idea is patentable?  Ask a patent attorney for free:

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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