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Provisional Patent Applications: What You Need To Know, Part 4

When Should You File A Provisional Patent Application? This answer depends on your situation. Technically, a provisional patent application can be filed at any time, because there are nearly no filing requirements and provisional patent applications are not examined unless you file a non-provisional patent application. However, just because you can file a provisional patent application at any time, doesn’t make it a good idea. The filing requirements for a provisional patent application are so low that you can literally pick up a random piece of paper on your desk and file it as a provisional patent application. The USPTO processes and holds all provisional patent applications the same, regardless of content. This is why there are so many provisional patent application scams. The timing of when to file a provisional patent application is a tradeoff. As Soon As Possible: Many inventors prefer to file a provisional patent application as soon as one or more inventors can describe how to make and use the invention as it will be described in the claims to avoid getting scooped. This strategy is great for winning the “race to the patent office.” However, you will only get protection for the invention as claimed…

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Provisional Patent Applications: What You Need To Know, Part 3

Where Do You File A Provisional Patent Application? All U.S. provisional patent applications are filed in the U.S. Patent and Trademark Office (USPTO). You or your patent attorney can mail or efile your provisional patent application to the USPTO from anywhere in the world.

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Provisional Patent Applications: What You Need To Know, Part 2

What Is A Provisional Patent Application? A provisional patent application is a 12 month “placeholder” for your invention. A provisional patent application is a legal document that can help you “win the race to the patent office.” However, a provisional patent application does NOT directly result in a patent. Instead, a provisional patent application is a legal document that can establish the priority date for your invention if and when you file a non-provisional patent application (i.e. a “real” patent application) within 12 months of filing the provisional patent application. In other words, a provisional patent application is a legal document that is designed to prove that you invented your invention before someone else files a patent application, publishes something, or does something that would destroy or limit your patent rights. Filing a provisional patent application in the U.S. Patent and Trademark Office (USPTO) is like sending the USPTO an email saying, “Dear USPTO: I think that I have invented something that may be valuable. I may or may not file a patent application to protect it within the next year. I am sending you this description of my invention to make it harder for people to steal my invention…

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Provisional Patent Applications: What You Need To Know, Part 1

Provisional Patent Application: Warning! Over 97% Of Patents Are Worthless. But The Right One Can Be Worth Millions Of Dollars Per Year. Read This Before You File. An invention is just an idea. An invention that gives you a market advantage is an idea that is worth protecting. The right patent can turn your invention into your most valuable asset by granting you a multi-year monopoly over your market advantage. That’s an advantage that you can build a business on. But most patents are worthless. If you want to make money with a patent, you are going to have to read, think, and find the right patent attorney for you. Provisional Patent Applications: A Tech Startup’s Best Friend and Worst Enemy Who Can File A Provisional Patent Application? One or more inventors or assignees (owners) can file a provisional patent application OR they can hire a patent attorney to file it for them. The purpose of a provisional patent application is to secure a priority date for a non-provisional patent application, such as a U.S. utility patent application or a PCT application. The only ones who can file a non-provisional patent application for an invention are people who contributed to…

How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims, Part 8

October 20, 2016
Childs Law
Protecting an Idea

This is the last post in my series “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims.” Thank you for taking the time to read my suggestions for how to understand patent claims. I hope you found these suggestions helpful. Here is a quick summary. Patents Only Protect Your Invention In Their Country of Origin. Only Issued Patents Can Be Used To Sue A Competitor. Only The Claims Of A Patent Protect Your Invention. Claims Are Usually Open-Ended: Make Sure That Your Claims Only Recite Essential Aspects Of Your Innovation. Patent Attorneys Are Claims Fundamentalists: Make Sure That Every Word Is Necessary And Not Overly Limiting. Challenge Every Word! Try To Envision All Variations Of Your Innovation And Ask Your Patent Attorney If Your Claim Will Cover That Variation. Find The Bottlenecks Created By Science, Your Application, Or Regulations, And Claim Them. It is up to you to make sure that your patent is valuable. No one will care more about your invention or your business than you do. If your patent attorney can’t find the time to help you prevent design around, you need to find another attorney. Thank you…

How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims, Part 7

September 21, 2016
Childs Law
Protecting an Idea

Invest Time In Your Patents! A CEO of a biotech startup was telling me that he is really happy with his current patent attorney. I was struck by his enthusiasm! What has this patent attorney done to deserve such loyalty? When I asked why he was happy, his response was that his patent attorney is really good at delivering the finished patent application with minimal input from the inventors. They send the patent attorney an invention disclosure. They receive a finished patent application ready for approval from the inventors. His words sent chills up my spine! That’s like being thrilled with a surgical consultation because the surgeon got you out quickly and didn’t ask a lot of probing questions! The surgeon may have saved you time, but shouldn’t you be more concerned about the success of the surgery?! Knowing what I know about patent claims, I wondered if there is any chance that his claims will protect his invention. Knowing what I know about startups, I wondered if his company will be around in a few years. This is the seventh post in my series “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To…

How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims, Part 6

August 30, 2016
Childs Law
Protecting an Idea

How I Discovered Patents! After I finished college, I was hired as a synthetic chemist by a medical device startup that was interested in making novel materials. This was my first week at my first job as a chemist. My first assignment was to research a way to make a target molecule. Wanting to impress, I diligently searched the literature for the best possible route. I found the perfect reference! I found a patent that made the exact molecule that we wanted to make and with a very impressive yield! This discovery was long before I got my Ph.D. in chemistry or my degree from law school. I didn’t even know what a patent was! My boss said that he was glad that I found that patent. It showed that I am a good researcher. However, that patent was owned our competitors. However, the patent couldn’t stop us from making the molecule itself, it could only stop us from using their method of making the molecule. When I asked why we didn’t just license the patent, he said that they had thought about licensing it. But they realized that it would be less expensive to hire a synthetic chemist to…

How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims, Part 5

This is my fifth post in my series “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims.” If you read my second post, then you know that only the claim section of issued patents can be used to sue for patent infringement. If you read the third post, then you have a few tips for reading patent claims. Will My Patent Claims Protect My Product? There is no way to know for sure if the claims that you draft to protect your innovation will actually do so. For example, the claims that you file in a patent application can be thought of as a starting point for negotiations with the U.S. Patent and Trademark Office (USPTO). As part of this negotiation, the USPTO may require that claims be amended in a way that reduces the breath of the original claims. Also, the body of patent law is constantly evolving, which can change the way that the claims are interpreted by the courts. That being said, product claims are usually considered much stronger than process claims. One reason is that an infringing product is easier to detect when a competitor offers it…

How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims, Part 4

This is the fourth post in my “How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims” series. If you read my second post, then you know that only the claims section of issued patents can be used to sue your competitors for patent infringement. If you read the third post, then you have a few tips for reading patent claims. The post discusses three special types of claim that are very common. What is a Markush Claim? A square sandwich for satisfying hunger comprising: a first piece of white bread and a second piece of white bread; a peanut butter layer; and a jelly layer, wherein the jelly layer contains a plant material selected from the group consisting of a grape, a strawberry, a raspberry, a blackberry, and a cherry, wherein the peanut butter layer and the jelly layer are located between the first piece of white bread and the second piece of white bread. A peanut butter and jelly sandwich containing grape jelly would likely infringe this claim because a grape is one of the plant materials listed. Markush groups are not open ended. If you can think of any…

How To Protect An Idea: A Guide For Scientists, Engineers, Inventors, And Business Leaders To Understand Patent Claims, Part 3

How Do I Read Patent Claims? During the Protestant Reformation, Martin Luther supposedly met with the protestant leaders at Marburg to determine if they could reconcile their differences and unite into a single protestant church. The stakes couldn’t have been higher! They agreed on every point... except for one. Martin interpreted the biblical phase “this is my body” to literally mean that the bread of communion became the flesh of Jesus Christ. However, the protestant leaders interpreted the phrase to be symbolic. To their way of thinking, it couldn’t be taken literally. There was no apparent physical change or scientific explanation for that statement. Taken in context, Jesus must have meant it symbolically. The protestant leaders argued this point again and again. Martin got so angry that he pulled out a knife and carved the phrase “this is my body” into the wood of the table. Every time the other side would try to argue this point, Martin would just angrily point to the words without further comment. Martin would not budge. The Lutheran church was born. Claim Fundamentalism This story may seem like a strange one for a patent law blog, but it always comes to mind when I…