“The future is already here. It's just not evenly distributed yet.” - William Gibson
In 1994, the U.S. amended the Patent Act of 1952 and introduced the concept of a Provisional Patent.
In 2011, the American Invent Act changed the proof of invention from First-to-invent to First-to-file.
Consequently, a provisional patent application became an indispensable tool to ensure first-to-file priority.
Some IP attorneys encourage inventors to file a provisional patent quickly and keep improving the inventions with more provisional applications until ready for the non-provisional application (as long as it’s done within 12 months).
Other IP attorneys spread a word of caution about provisional patent applications, telling inventors the provisional patent needs as complete as possible, otherwise there’s a risk to the priority date. They recommend to drop the provisional and take the time to write the full non-provisional application.
The chart above tells the story. So far, the second school of thought is pervasive.
There is a better way.
In our opinion, provisional patents are a vastly under-utilized, important, and very useful tool.
Provisional applications can help inventors get an early “foot in the door” towards a patent on their innovation. The filing cost is minimal ($75 to $300, depending on the company’s size), and the bureaucracy behind it (no formal patent application structure is required, no supporting documents, IDS, etc.) is also easy to handle.
A provisional patent allows you to safely expose your idea to investors, to potential customers / partners while having the patent-pending title behind your innovation.
So, why isn’t this done by everyone all the time? It is true, a bad provisional can be harmful.
The answer is to write a Good Viable Provisional (GVP).
The cost of creating a good provisional should be significantly lower than the cost of drafting a full-blown non-provisional application.
To achieve good viable provisional (GVP) you should focus on two things:
Provide as many examples and references as you can. Even if you’re thinking some of those details may not be implemented, or may not likely work, you should still include them. The more details you have, the easier it will be to support the future claims of the non-provisional application which will receive the priority date from your provisional.
Identify and emphasize the ‘inventive step’. Conducting a smart and efficient prior art search1 will allow you to identify problems with your invention at the earliest possible stage and thus to adjust and improve your patent to include actual inventive steps. A list of prior art thus obtained and adjusted to, can be safely disclosed to the patent office (as part of the non-provisional application’s Investor’s Disclosure Statement).
Think about a world where you just had an amazing idea for a product today, and tomorrow you’re meeting with investors or potential customers to discuss your idea.
You are hesitant because you know disclosure will be a potential problem in obtaining patent protection. On the other hand, a patent filing may take weeks of work.
What if you could just upload your idea/presentation to a system that will automatically detect the inventive step and provide you a draft of a provisional application as well as some basic analysis of potential competition and relevant prior arts?
In such a world, and for the cost of the actual provisional patent filing, it’s a no-brainer. File as many PPAs as possible2.
Is such system available to you today? (See Gibson’s quote above)
Advancements in NLP (natural language processing) AI technology allows us to run complex and tedious tasks that will take people a long time in an effortless, efficient, and accurate manner.
The system that creates the ultimate Good, Viable Provisional (GVP) is here today.
Usually, patent attorneys will discourage you from conducting a patent search by yourself. First, they do not trust you will do a good job. (Your attorneys will be happy to conduct such a search for you for the right fee.) Second, they’ll advise you that if you find something and not disclose it, it may impact the validity of your patent. They are right, you should disclose it. Further, not disclosing doesn’t improve the likelihood of your patent being granted (the USPTO examiners are very good at prior art searches).
In such an environment, it’s likely that filing provisional applications will increase dramatically, and will be used by any individual or corporate (or research institute) with innovations and before any public exposure. We anticipate provisional patent applications will see a dramatic increase in volume. Finally, we will benefit from that great gift given to us in 1994