Provisional Patent Applications

Not all entrepreneurs fit the classic startup mold. For example, many innovative businesses have the money they need and plan to sell their invention within 1-6 months. These businesses have little or no interest in obtaining a patent in 3-6 years. This is especially true for businesses that want to be first-in-field to capture market share or are based on rapidly evolving technologies that will be obsolete within 3-6 years, such as computer software. The preferred patent filing strategy here is typically to file a prioritized US non-provisional patent application and to get a US patent as quickly as possible, usually within 3-9 months. These businesses can then use the issued US patent to protect their sales by suing or threatening to sue any competitors that dare to copy their invention. I call this the “short game.” Move fast, grab as much market share as you can, and use your patent to defend your turf. And if you play your cards right, you may not share your market at all. You can use patents to create a legal monopoly. And if you can’t make money with a monopoly, then you can’t make money at all. Are you worried that these…

The answer to this question depends on several factors, including if you need outside investment, if you want to protect your invention in just the U.S. or multiple countries, and if your business is ready to start selling. Most startups and entrepreneurs are bound by the same limitations. They need outside investment, they want to protect their invention in multiple countries, and their invention is not ready for commercialization yet due to a lack of resources (money) or needs more development (design). These similar limitations lead to a common filing strategy that I refer to as the “long game.” The inventor starts by filing a U.S. Provisional Application. This step helps the inventor secure their priority date and protects their invention for up to one year while they refine their invention and talk with inventors, experts, manufacturers, and the like under NDAs. At the end of the year, the inventor then files a PCT Application. The PCT Application acts like an international placeholder that allows the innovator to continue raising investments for another 18 months while putting off the costs of international patent applications as long as possible. The PCT Application is also examined and published, which gives the inventor…

Patent pending is a type of patent status and a legal warning recognized by US Patent Law.

It tells others that you have applied for a US patent. You can legally describe your invention as having “patent pending” status when you have a least one U.S. patent application currently pending before the United States Patent and Trademark Office (USPTO). This statement tells potential investors and business partners that you have taken steps to protect your invention. It warns your competitors that they should think twice before copying your invention because if your patent application issues as a US patent, then you could sue them for patent infringement in the US.

Yes, but you will have to file for a patent application in each country that you want protection in. As you may know, a US Patent will only protect your invention in the USA. It will not protect you in Mexico, Canada, France, or Japan. If you want protection for your invention in those countries, then you will need to file a patent application in each of those countries to obtain a Mexican Patent, a Canadian Patent, a European Patent or French Patent, and a Japanese Patent. This might sound daunting, but it’s routine. Most businesses in the U.S. that want international patent protection start by hiring an U.S. Patent Attorney like me. We draft a patent application for you and file it as a PCT Application. This will give you up to 30 months to raise the funding necessary to seek international patent protection. In about 28 months, your patent law firm should write you and ask which countries you would like to protect your invention in. Once we have your answers, your patent law firm can arrange to have your patent application filed in each country. Most U.S. patent law firms have formed a network of patent agents…

One of the common decisions startups and entrepreneurs have to make is whether or not to file a PCT application. To put this question in context, it's important to understand what a PCT Application is and what a PCT Application is not. A PCT Application is a type of non-provisional patent application that can secure your priority date in most countries. Anytime you file a patent application you are entering a world-wide race to the patent office. There is no prize for second place. You can win most of the entire international competition by filing one PCT Application to secure your priority date in 153 countries around the world. This makes the PCT Application the ultimate innovation place holder. Now let's talk about what a PCT Application is not. A PCT Application is not a patent application that - by itself - will ever become a patent in any country. Instead, a PCT Application is a non-confidential, international placeholder application that can serve to secure your priority date for up to 30 months in most countries. PCT Patent Application = Published + Placeholder + Holds for up to 2.5 years. For example, you can file one PCT application to protect…

One of the most common questions I get is: should I file a provisional patent application? The answer to this question depends on what you need. To put this answer into context, it's important to understand what a provisional application is and what a provisional patent application is not. A provisional patent application is basically an official letter to the United States Patent and Trademark Office (USPTO) that a basically says: you want to file a patent application, but you're not quite ready yet. But if you do, you want to hold your place in line. In other words, a provisional patent application is a confidential placeholder that holds your place at the patent office for up to one year. Now let's talk about what a provisional patent application is not. A provisional patent application is not a patent application that can issue as a US patent. This point is so important that I'll repeat it. A provisional patent application - by itself - will never result in a US patent. A provisional patent application can only serve to secure a priority date for a non-provisional patent application. Provisional Patent Application = Confidential + Placeholder + Up to 1 year…

One of the most common questions I get is: how long does it take to get a patent? My question in response could be: How long do you want it to take? The longest I've seen a patent application take to issue as a US patent was about 10 years. The least amount of time I’ve seen for a patent application to issue as a US patent was 2 months flat. The time it takes to get a US patent depends on the filing strategy used, how quickly you can reach agreement with the examiner, and how much money you have to spend on getting a patent. First and foremost, there is no guarantee that your patent application will issue as a US patent at all. For example, I've seen many patent applications go abandoned because the inventors ran out of money during the patent application process. This may be due to changing economic conditions such as the COVID-19 pandemic or an inability to reach agreement with the examiner until the inventor’s funds are depleted. But most of the time, how long it takes for a patent to issue depends on your business needs. For example, many pharmaceutical companies and…

One of the most common misconceptions that I run into is the idea that it takes many years to get a patent application issued as a US patent. This is false. The truth is: it CAN take years for a patent application to issue as a US Patent. However, you CAN choose to have your patent application issue as a U.S. Patent in as little as a few months. How quickly a patent application can issue as a US patent critically depends upon which filing strategy you use and how quickly you can reach agreement with a US patent examiner. If you choose to file a regular priority US non-provisional utility patent application, then the United States Patent Trademark Office (USPTO) will examine your patent application for patentability in an average of 16 to 18 months. This average means that your patent application stands little or no chance of being allowed in less than a year and a half. But what if you are ready to start selling right now?!? Did you know that you can pay to go to the front of the line? That’s right! You can choose to file a PRIORITIZED non-provisional patent application that the USPTO…

I get calls from inventors all the time who want to know how quickly they can file a patent application. This question usually arises because the inventors are in a hurry to start selling their invention, to publish their invention, or to talk with investors. The short answer to this question is: you can file patent application as soon as it's ready. The filing process itself is electronic and nearly instantaneous. However, for the purposes of this post, it will be assumed that you will have a patent attorney help you draft your patent application. And that takes time. There is no set limit for how long it takes to prepare a patent application. However, most patent applications take about 30 to 40 hours to draft. This estimate includes the initial inventor interview when the patent attorney interviews the inventor to learn as much as possible about the invention. This estimate also includes the process of drafting the patent application and revising the patent application based on inventor feedback. This estimate does not include a patentability search or a freedom to operate search. Those are usually separate, optional services. Typically, the process from start to finish takes about 3-5 weeks,…