The Importance of Preliminary Patents
If you’re an inventor with limited time to prepare a full patent application, filing for a preliminary patent may be worth considering. Doing so will grant you a “patent pending” notice and allow you to assess the commercial viability of your invention.
Provisional applications typically include a written description as well as drawings or diagrams of the invention. These can be extremely helpful to patent examiners later in the prosecution process.
1. Priority Date
Priority dates for patent applications are essential in order to guarantee that your invention can take precedence over any competing patents filed or published after your filing date. The United States Patent and Trademark Office operates under a first-to-file rule, so the earlier you file, the greater your chances are of maintaining your priority date.
Maintaining your priority date can be a challenge. A priority date may be lost due to various reasons, such as failing to convert your provisional into a non-provisional within one year from its filing date or having to re-file the initial provisional due to non-compliance with statutory deadlines.
Under reg 3.12(4), a priority document may be entitled to an earlier priority date if it discloses the claimed invention in sufficient clarity and comprehensiveness for someone skilled in the relevant art to perform it. Furthermore, these Regulations acknowledge that deposits made under the Budapest Treaty are taken into account when determining priority dates related to inventions involving microorganisms.
In a patent family, each feature of an invention has its own priority date. The earliest priority date for that feature is the filing date of the related application that first disclosed it in its specification. Subsequently, new features added in other related applications receive later priority dates based on when they were initially introduced.
Maintaining the earliest priority date for your invention is usually recommended, since this will limit the number of prior art references that can be used against claims reciting its features. Furthermore, keeping your earliest priority date makes obtaining patents on your invention much simpler.
Another advantage of obtaining the earliest possible priority date is that it can shield you from being sued for infringing another person’s patent. This is especially true if you have applied for your invention in multiple countries.
2. Prior Art
Prior art refers to any information related to your invention that was known or disclosed before you filed a patent application. This could include patents, pre-grant publications, technical literature, advertisements, web pages and lectures presented at scientific conferences.
Prior art can take many forms, but two of the most prevalent are patents and pre-grant publications. These documents are typically discovered during a search and can be invaluable assets to your application.
Discovering information about your invention can be invaluable when assessing its novelty and inventiveness. The more knowledge you possess regarding its subject matter, the easier it will be for you to formulate strong claims.
If you can’t locate the information yourself, try reaching out to someone in your field of research. Talking with a patent attorney who is experienced with this kind of research might also be beneficial; they can assist in crafting the most advantageous strategy for your case.
Once you have all of the information needed, filing a patent application and beginning patenting your invention is easy. Just keep in mind that you don’t have to disclose all details discovered during this process to the patent office.
It is possible for the patent office to request all of your prior art, but it’s best to limit yourself to only relevant and useful data. Having too much prior art could negatively affect the validity of your patent.
Furthermore, some countries provide “grace periods” for certain disclosure types that can be an invaluable aid in narrowing down your invention’s scope. These grace periods vary by country and are essential in guaranteeing you have a competitive chance at receiving a patent.
It is wise to identify your inventors in your preliminary patent. Doing so can assist in protecting against future prior art challenges against your provisional patent. In the United States, an inventor is defined as anyone who has contributed to the conception of at least one claim in your patent – this includes not only those who invented it but also those who put it into practice.
3. Filing Requirements
The initial step in filing for a preliminary patent is to provide an accurate, comprehensive description of the invention. This should be written so that someone trained in this field could comprehend it clearly. It should include details about how it functions and how it’s constructed, as well as being detailed enough for anyone with basic skillset to manufacture and utilize the item.
Depending on how the description is written, additional drawings of how your invention is constructed may be necessary. While this step is optional, it could help patent examiners gain a better insight into your invention.
For your invention to qualify as “patentable,” it must meet several criteria. Your idea must be statutory, novel, useful and non-obvious; additionally, it must be of “patentable subject matter,” which is defined as something that can be patented – including processes, machines, manufactured articles or compositions of matter.
Once you have a good idea of what you want to protect, begin an exhaustive search for prior patents and/or sales of inventions similar to yours. You can conduct this research yourself online, or hire a patent searcher for assistance.
If you can locate prior patents of similar inventions, these will constitute your “prior art.” To locate this prior art, search through public records such as court and government documents, engineering libraries, or even the Internet.
After reviewing your prior art, you should then create a patent specification that clearly describes your invention and seeks protection for it. This document should then be filed along with your provisional patent application.
Another essential step in prepping for your patent application is making sure the specification satisfies all USPTO provisional application requirements, which can be found in 35 U.S.C. SS 112 and 37 CFR 1.53.
Once your specifications meet all the necessary criteria, you will be granted a USPTO filing date for your provisional patent. This allows you to initiate the patent examination process and claim priority over that provisional patent.
By filing for a patent, an inventor effectively gains exclusive ownership of their invention for an extended period. This helps safeguard their idea and prevent others from making use of it.
Depending on the invention and technology involved, patent costs can range anywhere from $800 to over $100,000. With an understanding of these potential fees and costs associated with pursuing a patent, you can decide if it is worthwhile for you to pursue one.
The cost of a preliminary patent is determined by several factors, including the priority date and prior art. Whether you file for either a provisional patent or non-provisional patent will also influence filing and search fees.
Filing for a provisional patent is an economical and time-saving solution, providing valuable insight about your invention without needing to invest a large amount of resources or effort into the patent prosecution phase. However, keep in mind that a provisional patent does not grant you full protection like a utility patent does.
If you decide to file for a provisional patent, the initial step is creating an exhaustive description of your invention. This critical element can make or break your application; make sure there is enough detail so anyone who understands your field of expertise can reproduce the invention with ease.
Additionally, include any technical drawings, sketches or abstracts you have created for the invention in your application. Doing so will allow the USPTO to comprehend your invention and grant you a patent.
Your attorney will then submit your application to the USPTO for examination, which can take anywhere from six months to a year. If they determine that your invention does not qualify for patent protection, you will receive a rejection letter from the USPTO.
Once an examiner determines that your invention qualifies for patenting, you will be notified and have a chance to appeal the decision. This process could take anywhere from two to five years; at this point, having an experienced patent lawyer on board can prove invaluable.