Speed to market is paramount today. Whether you are a creative person, inventor, entrepreneur, startup, medium-sized enterprise, or Fortune 500 company, there’s no doubt that filing intellectual property quickly after the conception of a new invention, innovation, or service is an absolute must. This is a standard position held by most experts given that our patent system is now ‘first inventor to file’ and not ‘first to invent.’
The strategic benefits of establishing perceived ownership over an asset are numerous. From deterring competitors to raising capital, the intellectual property you file must support your overall business strategy. However, at such an early stage, there are many unanswered questions. You won’t have done enough research, let alone have talked to enough people, to make a sage determination about whether and how to move forward using the resources at your disposal. You need time to gather this critical information — which is why you should absolutely file a provisional patent application (PPA) first.
To be clear, this is business advice not legal. I’m a patent holder who has filed at least twenty provisional patent applications, not an attorney. (I’ve also written a book about the benefits of PPAs and sell a system for writing PPAs.)
Of course, the PPA you file must be effective, meaning it clearly describes a point of difference by taking the history of the innovation into account as well as projecting into the future. Moving forward, I’ll explain how to write a provisional patent application that has value. I’m dedicating this article to the strategic benefits of filing a PPA first. (What’s required in a PPA? Read patent attorney Gene Quinn’s in-depth explanation.)
There are patent attorneys who argue that writing a good PPA will take them just as long as a non-provisional patent application. That’s hogwash. Provisional patent applications don’t require claims. (If you plan on filing internationally, you should have a patent attorney write at least one claim. Constructing claims correctly is specific and challenging, which is one reason why I would never write my own non-provisional patent application.) The fact that PPAs don’t include claims is an asset at this early stage. Potential licensees, vendors, investors, and other partners cannot tell exactly what you are protecting.
The benefits of filing a provisional patent application before a ‘fully-fledged’ or ‘regular’ application, formally known as a non-provisional patent application, are many — including the fact that you can write your own. Depending on the size of your operation, filing a PPA with the United States Patent and Trademark Office will cost a mere $65-$260. After you file a PPA, you are legally entitled to describe your invention as ‘patent pending’ for the next 12 months. That’s powerful.
One reason why? Non-provisional patent applications that have yet to issue are similarly described as ‘patent pending.’ So, there’s a degree of ambiguity. I love that. After all, no one can say for sure whether a patent will issue. Because gray areas like these are subject to interpretation, you can use them to your advantage. As an entrepreneur, I relish gray areas. They are a potential source of strength, not a weakness. It’s like playing poker: No one else can see your hand.
A year of patent pending status is ample time to test the market if you’re prepared to hit the ground running. For example, having established some perceived ownership with a PPA, you can begin confidently approaching contract manufacturers for quotes, buyers with the intent of securing a purchase order, vendors for their perspective, marketing consultants, and so on. You can also continue building and testing different prototypes, leading to important discoveries.
As you continue researching the market, I guarantee that you will come across highly relevant pieces of information. (Not to mention aspects of the invention that you have not yet considered.) For example, improvements are likely needed. What about potential variations and workarounds? Manufacturing issues for which you will need to provide a solution? Lurking roadblocks?
If you wait to file intellectual property until you have all of the answers to these questions, you may no longer be the first inventor to file. You may even miss the market.
During your year of patent-pending status, hone in on your point of difference as you test the market. How does your idea compare to competitors? Is this a product or service your customers actually want and will pay for? Can you get others to buy in on your idea, be it in the form of a capital investment, loan, or licensing agreement?
You need to know before you commit to filing a non-provisional patent application, which can easily cost $15,000-$35,000.
Testing the market is one big benefit of filing a PPA first, but it’s not the only one. To further refine your point of difference, I highly recommend continuing to search for prior art. Keep in mind that there will always be more to dig through, so don’t drive yourself crazy trying to find it all. You can teach yourself how to search for prior art (which I will show you how to do in a later article) or hire someone to help you. Even if you go the latter route, there are big benefits in taking the time to do your own search as well.
Study the claims of existing patents with an eye out for what is missing, such as a method of manufacturing. So many ideas are patented that no one understands how to actually produce. If you figure it out, you can then file additional intellectual property on manufacturing techniques. You may end up discovering a technique that enables you to produce your concept more efficiently, which is one of the best ways to protect an asset.
The reality is, you will make improvements to your invention. When you do, you can file additional provisional patent applications on these improvements. And get this: You can fold additional applications filed within that first year into a single non-provisional patent application, if you decide to go ahead and file one. How great is that?
Filing a provisional patent application is like putting a stake in the ground. You’re securing a date, basically. No one at the USPTO will ever even read your PPA. (Unlike non-provisional applications, which are typically made public after 18 months. Filing a PPA first buys you an additional year of secrecy, in other words.)
For simple consumer product ideas, having a well-written PPA is enough to secure a licensing agreement. You can license complex ideas the same way. I know, because my students license their ideas with only a provisional patent application week in and week out.
If you’re a startup trying to raise capital, a well-written PPA can be used to take away fear from investors. You can also use them to motivate others to work with instead of against you by instilling fear.
Think of your PPA as the first brick in the wall of your IP strategy. You’re taking on little risk. So, if after researching the market, you end up deciding to walk away — no harm no foul. Perhaps the field is simply too crowded or your point of difference is not strong enough. You will have saved tens of thousands of dollars.
Early on in my career, I made the mistake of rushing to file two non-provisional patent applications out of fear. They, like the vast majority of patents, turned out to be worthless. Today, when it comes to any new idea, I would always file a PPA first. I’ve learned over time that it’s much better to take a deep breath, research the marketplace, keep searching for prior art, and ultimately, get the crucial feedback I need from potential partners before I invest my own money.
With PPAs, you can dream, speculate, and ultimately make a much more informed decision about what your idea is worth and how to protect what is truly valuable about it.
I will describe in detail how to write a provisional patent application that has value in a future article. Even if you decide to hire an attorney to write your PPA for you, there are compelling reasons why you should take a first stab.
Article courtesy of Forbes.com, first published on January 8, 2018 under the title “Don’t File That Patent Yet. File A Provisional Patent Application First.” Link to original publication: https://www.forbes.com/sites/stephenkey/2018/01/08/dont-file-that-patent-yet-file-a-provisional-patent-application-first/#1cc7fe4757fe.