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Provisional Patent Applications: What You Need To Know, Part 14

When Should You File A U.S. Utility Patent Application? That answer depends on your situation. You can file a U.S. utility patent application as soon as you draft claims that will protect and define your invention, AND you can describe to a person skilled the art how to make and use the invention as described in your claims. However, once a U.S. utility patent application is filed, then you cannot easily add subject matter to your application. Therefore, it becomes a balancing act. Filing later allows you to fully develop your inventive product and evaluate the market for your invention. Filing sooner deceases the threat getting scooped by someone else. If you filed a provisional patent application, then you may want to file your U.S. utility patent application within a year, otherwise, your provisional patent application will lapse and you will lose your priority date. Still another consideration is when you want to sue or threaten to sue others for practicing your invention without your permission. You cannot sue others until a U.S. patent issues from your U.S. utility patent application. Of course, costs are also a consideration.

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Provisional Patent Applications: What You Need To Know, Part 13

Where Can You File A U.S. Utility Patent Application? All U.S. utility patent applications must be filed in the United States Patent and Trademark Office (USPTO). All utility patent applications must be filed in the USPTO either directly using a U.S. non-provisional utility patent application or indirectly by filing a PCT application AND then a U.S. national stage application. A U.S. utility patent application can provide protection across the entire USA, because a U.S. utility patent can be enforced across the entire USA. A U.S. utility patent cannot be used to sue competitors in any other country. Also, an inventor, a U.S. patent attorney, or a U.S. patent agent can file your application by mail, fax, or on the Internet from anywhere across the U.S. or around the world.

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Provisional Patent Applications: What You Need To Know, Part 12

What Is A U.S. Utility Patent Application? A U.S. Utility patent application is an official request for a U.S. utility patent. A U.S. utility patent application is an official request for the U.S. government to grant you the right to exclude others from practicing your invention for the life of any patent that issues from your U.S. utility patent application. Basically, the U.S. government wants to encourage inventors to innovate and publicly disclose new inventions. In exchange for your teaching the public how to make and use your invention, the U.S. Government may grant you a U.S. patent that will allow you to sue others for making, using, selling, offering for sale, or importing your claimed invention without your permission. There are three types of U.S. patents. A utility patent protects functional inventions. Design patents protect the non-functional appearance of inventions. Plant patents protect new plants that you discover or invent.

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Provisional Patent Applications: What You Need To Know, Part 11

U.S. Utility Patent Applications: What You Need To Know To Protect Your Invention And Your Profits. Who Can File A U.S. Utility Patent Application? An inventor or assignee (owner) who wants to obtain patent protection in the USA. Only an inventor or assignee (owner) of an invention can file for a U.S. utility patent application. You cannot apply for a patent for someone else's invention. However, an inventor can agree to assign any invention to you and then you will own the patent application that gets filed.

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Provisional Patent Applications: What You Need To Know, Part 10

How To Avoid Provisional Patent Application Scams. Be Deeply Suspicious of Service Fees Of Less Than $3,000: According to the AIPLA, the average service fee for drafting and filing a provisional patent application is about $4,000. Why are they so much lower? Would you rather pay $4,000 for a provisional patent application that might protect your invention or $3,000 for a pretty, but useless provisional patent application? Is it worth risking your invention, your business, and your projected profits to save a couple of hundred dollars? Look For Your Claims: Scam artists and disreputable patent attorneys delight in telling people that provisional patent applications do not technically require claims. Similarly, you are not technically required to wear a parachute when jumping out of a plane at 30,000 feet. But isn’t a good idea? The claims define your invention. No Claims = No Invention. Your claims are only part of the patent application that will protect your invention. No Claims Language = No Written Description = No Priority Date = No Protection. Any reputable patent attorney will start the application drafting process by drafting your claims and then building the application to support your claims. Look on the last couple of…

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Provisional Patent Applications: What You Need To Know, Part 9

Provisional Patent Application + Greedy Patent Attorney = Useless Provisional Patent Application. These scams create a problem of sticker shock. According to the AIPLA (American Intellectual Property Law Association) 2015 survey, the median cost of having a patent attorney draft and file a provisional patent application ranges from $2,000 to $6,000. It is just too difficult for many startups and entrepreneurs to pay this price after seeing so many advertisements on Google or in magazines that promise to prepare and file a provisional patent application for just $100 to $3,000. This is where the greedy, lazy patent attorney comes in. There are some patent attorneys who could do a good job, but choose not to. All that have to do is to quickly draft something that could fool the untrained eye into believing that the provisional patent application will protect their invention. Then they can charge $1000 - 4,000 and pocket the difference. These sleazy patent attorneys know that they will not be caught because provisional patent applications are not published, most provisional patent applications are not relied on or examined, and even if they are, over 75% of startups fail. I guess it’s just too tempting for them to…

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Provisional Patent Applications: What You Need To Know, Part 8

Provisional Patent Application Scams: Reading This Page Can Save Your Invention And Thousands Of Dollars. Don't Let This Happen To You! The founder of a startup contacted me for a free, no-obligation consultation. He was founding a tech startup company based on his own invention. He paid an out of state patent attorney $500 to draft and file a provisional patent application for him. After filing his provisional patent application, he spent the next year pitching his invention to investors and potential customers. He came to me because he wanted a local patent attorney to file a U.S. utility patent application based on his provisional patent application. I took a look at his provisional patent application so that I could provide him with an accurate estimate. When I Saw Left Me Stunned! His provisional patent application looked like little more an abstract. There were no claims. There was no description of how to make and use the claimed invention. It probably looked great to the untrained eye, but to the trained eye, it was completely useless. His provisional patent application wasn't worth the paper it was written on. Oh wait! It gets worse! The founder thought that the provisional patent…

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Provisional Patent Applications: What You Need To Know, Part 7

How To File A Provisional Patent Application? You can hire a U.S. patent attorney, like me, to draft and file your provisional patent application for you, OR You can file it for yourself. Due the complexity of patent law, I highly recommend hiring a U.S. patent attorney or U.S. patent agent to draft and file your provisional patent application for you unless you are prepared to spend a lot to time and money learning how to competently draft your own patent applications. While I cannot guarantee that my services are a good fit for your needs, why not call me to see if I can bring some value to what you are doing? If you decide to draft and file your own provisional patent application, here are some resources for you. A provisional patent application can be filed by mailing the application, coversheet, and fee to: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. A provisional patent application can also be electronically filed. For general guidance on filing a provisional patent application yourself, click here.

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Provisional Patent Applications: What You Need To Know, Part 6

How Much Does A Provisional Patent Application Cost? The answer to this question mostly depends who drafts and files your provisional patent application as well as the size of your business. Governmental Fees: The USPTO governmental fees for filing a provisional patent application are: $260 for a large entity (generally a business with more than 500 employees), $130 for a small entity (generally less than 500 employees), $65 for a micro entity (generally university related, non-for-profit, or no inventors had filed 4 or more patent applications). USPTO fees change over time. These were current on July 14, 2016. Patent Attorney Fees: According to the 2015 AIPLA annual survey, the service fees for having professional U.S. patent attorney or U.S. patent agent prepare your provisional patent application average from $2,000 to $6,000, depending greatly on the patent attorney you choose. Typically, biotech, chemical, and electronic patent applications cost more to draft.

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Provisional Patent Applications: What You Need To Know, Part 5

Why Should You File A Provisional Patent Application? To get the earliest filing date possible while giving you a year to develop your invention, evaluate the market, and put off costs. To Establish A Priority Date: You do not need to file a provisional patent application to get the earliest filing date possible. You can get the earliest filing date by filing a provisional patent application, a non-provisional utility patent application, or a PCT application. All three can establish your priority date. To Improve Your Invention: Provisional patent applications can make it easy for you to improve your concept of your invention when you file a non-provisional patent application (i.e. the “real” patent application). In contrast, a utility patent application and a PCT application do not allow you to easily change or add to the conception of your claimed invention. You are stuck with whatever you filed. Almost all changes would need to be added by filing another utility patent application or a PCT application. To Evaluate The Market: Basically, the provisional patent application gives entrepreneurs, startups, small businesses, and universities one year of secrecy to develop the invention, evaluate the market for the invention, and pitch the invention to…

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