How to Look Up Provisional Patent Applications
How to Look Up Provisional Patent Applications
Many inventors are advised by non-patent attorneys that filing a provisional patent application is the fastest, cheapest way to get their invention “Patent Pending”. But it’s essential to comprehend the limitations of this process.
Furthermore, if you fail to renew a provisional patent application with a non-provisional patent application within one year of filing it, your invention will automatically lose its priority date. This opens the door for companies to take advantage of your idea without paying you for it.
Before even considering filing a provisional patent application for your invention, it is recommended that you conduct an exhaustive patent search. This will help identify whether there are other inventions out there which might already have been patented, saving time and money when drafting and submitting your own application.
In addition to searching the USPTO and worldwide patent databases, you should also examine peer-reviewed scholarly journals, industry publications, product data from company websites, and universities (theses, technical reports, and research). These sources may help identify patents that are similar to your invention.
Starting from these sources, you can then focus your search to specific categories within the patent database. These include title, inventors, claims, abstracts and entire texts.
Once you’ve identified relevant data, it’s wise to analyze it in order to discover its potential alignment with both your patent portfolio and overall business strategy. Generally, this involves understanding how your invention fits within other key innovations in your portfolio as well as any competitive strategies employed.
A comprehensive patent search not only saves you time and money by avoiding the filing of either provisional or non-provisional patent applications, but it also safeguards your valuable intellectual property. Furthermore, it can identify competitors using or selling similar inventions, providing you with insight into developing a more successful marketing strategy.
Conducting a patent search can be intimidating for novice inventors or those without much expertise in this area. That is why many innovators enlist the assistance of a patent attorney to handle this crucial task on their behalf.
Patent searches are an essential first step in the invention process, but they’re just the start. Conducting a comprehensive patent search takes time and expertise – something not every inventor should attempt on their own.
Ideally, it is wise to enlist the services of an experienced patent attorney to conduct your search on your behalf. Doing so guarantees accurate results and saves time, money and stress by preventing you from filing for a patent on an idea which is likely rejected by the USPTO. A professional patent search can save both time and money in the long run by helping ensure accurate patent applications.
Prior art refers to any information that shows or implies a use of technology similar to your invention for which you are seeking patent protection. This includes published patents and applications, technical publications, journal articles, trade journals, sales of similar products as well as marketing data and traditional knowledge that is publicly accessible documents.
Recently, the Federal Circuit has expanded the definition of prior art to encompass more topics. This has created unique advantages for both patent challengers and owners alike. In Ariosa Diagnostics v. Illuminan, for instance, the court held that disclosures made in a provisional application should count as prior art if another non-provisional application claims priority to that disclosed subject matter in the provisional application.
However, the Federal Circuit has also held that a provisional application should not be considered prior art if its disclosures are inadequate to describe an invention sufficiently for patent examiners to comprehend it. Thus, inventors must show that their invention described in a provisional application is non-obvious.
This requires that the prior art must enable someone of average skill in the field of the invention to execute it. Furthermore, the invention must not be obvious nor have been discovered accidentally or out of necessity.
Prior art searches should always be conducted before filing a provisional application, either online or by hiring an expert searcher.
One type of prior art that can be particularly challenging to locate on your own is the “making” of an invention in America by a previous inventor before the later inventor has any idea for it. If this type of evidence exists, then it can be used as evidence that the later inventor wasn’t the first to create and describe an idea.
Another type of prior art is patents and published applications which disclose an invention in detail. This includes any publication which describes an invention and provides instructions on how to make it.
The Patent Office can make a provisional patent application public if another non-provisional application claiming benefit of the filing date of the provisional is filed within one year and claims priority to it. As a result, the provisional is published 18 months from its earliest effective priority date – calculated from either that non-provisional patent application’s filing date or earlier when an earlier utility patent application is properly claimed as priority.
It can be challenging for patent challengers to construct valid invalidity analyses when new claims are supported by prior art disclosed in a previously filed provisional application. As such, it is essential that patent owners stay informed about published documents containing new claims that draw upon prior art disclosed in an earlier filed provisional application.
Additionally, the language of a provisional application may differ from that used for non-provisional applications. For instance, written materials included in such an application might have been created by engineers or scientists and contain company specific terms which are unfamiliar to industry insiders, as well as customer-facing terminology that is difficult to comprehend for potential users of the invention.
When this occurs, non-provisional applications filed using a different language are likely less likely to prevail in a priority contest with an earlier provisional application that has already been examined by an examiner.
It is also essential to remember that while a provisional application does not constitute prior art, an inventor in the provisional may still be bound by employment agreements or institutional intellectual property policies to assign their patent rights to their employer. Therefore, if an inventor in a provisional is an employee or contractor of an entity which needs to assign its patent rights, the patent owner should search for any other entities with an undivided ownership interest in the provisional.
Though these issues are somewhat complex, they should be taken into account when applying for a provisional patent application. By being aware of the above, you can ensure your intellectual property is safeguarded in the most advantageous way.
Filing a PPA
If you have a new invention that needs to be commercialized quickly, filing for a provisional patent application (PPA) is often your best bet. It is less costly than filing a full patent application and usually takes only 10 pages or less to explain the invention’s design and how it can be utilized.
However, filing a PPA does have some disadvantages. For one thing, it’s only valid for one year after filing and if you don’t file a non-provisional patent application within that year, any benefits that it might have granted you will no longer apply and you’ll lose them forever.
This can be especially problematic if your invention has already been publicly disclosed, as it could void all of your patent rights. That is because the disclosure must be sufficiently detailed for someone of ordinary skill in the art to make and use the invention without undue experimentation.
One major disadvantage of using a provisional patent application is that it cannot be refiled as non-provisional once its validity has elapsed. Refiling can only take place months before or after its original filing date, since the priority date of the provisional patent application relates back solely to its filing date with the U.S. Patent & Trademark Office.
Finally, it is essential to be aware that a PPA does not protect you against competition. If another manufacturer or inventor attempts to sell the same product, then you would have to sue them in court for patent infringement and hope to prevail – an undertaking which requires considerable effort and expense.
Therefore, it is essential that you search for provisional patents before submitting your application in order to avoid any issues in the future. You can do this using Google Patents or another similar site; additionally, bookmark or print any patents relevant to your invention and reference them when filling out the form. If unsure where to start, an experienced attorney can assist in recognizing any prior art that could affect your application.