All businesses but especially startups should become acquainted with the patent process. All too often this happens after the horse has left the barn and it’s just too late. This short introduction should help you to protect your right to get a patent.
You may be asking yourself “Why bother? Who cares?” The answer to that is pretty simple. Patents add value to your enterprise. Patents also indicate that your invention is more than a routine development. Patents give you the right to stop others from using your invention unless they obtain a license from you (a source of income). Also, someday you may be targeted by another patent-holder, and having patents of your own that others want to use can help to solve the problem (cross-licensing). The downside of a patent is that it constitutes a public disclosure of your invention. But how long can you keep it secret anyway?
You seek a U.S. patent by filing an application with the U.S. Patent and Trademark Office (USPTO). This is almost always done through a registered patent attorney or agent. If you wait too long to file, you can lose your rights. Your own public activities can become prior art against your subsequent patent application. “First to invent” is not the law of the land anymore – it’s first to file (subject to some exceptions). The usual kind of patent covers any new and useful process, machine, manufacture, or composition of matter, or any improvement to any of those. Some inventions are ineligible for patents – ones which try to patent laws of nature, physical phenomena, or mere abstract ideas.
In order to obtain a patent, your application must provide a written description of the invention in terms sufficient to enable others skilled in that technical art to make and use it. You must also disclose the best way you know (at the time of filing) of practicing the invention. Depending on the technology and the details, the costs of preparing and filing an application for a normal, nonprovisional patent can be more than you can afford or want to spend right now.
Fortunately, there is a convenient and less costly procedure that will help you considerably. You can file a “provisional” patent application. This gets a filing date from the USPTO and postpones the time when you can file the more complete patent application (a “nonprovisional” one). The provisional application does not get examined or published, and it buys you 12 months to decide whether to file a regular patent application and, if so, what to focus on. Provided that your provisional application includes an enabling disclosure, when you do get around to filing your regular (nonprovisional) patent application within 12 months, you can claim the filing date assigned to your provisional patent application for whatever it disclosed. You could even file a series of provisional applications as you develop your technology, in case the earliest one is not fully enabling.
This earlier date limits the prior art that can be cited against your regular application. For instance, if someone else publicizes the invention before you have either application on file, the public information about it becomes prior art against you unless you can prove that it was derived from you. Other practical reasons for filing a provisional patent application are: (1) you get an official filing date; (2) you avoid as much as possible the problems of your invention being disclosed after you file the provisional application but before you get around to filing your regular application; (3) it gives you time to decide whether pursuing a patent is worth the expense; and (4) many times, someone in your organization wants to publish information about the invention or start offering it for sale. Doing that before filing a patent application usually results in the complete forfeiture of patent rights outside the U.S. and can jeopardize your own right to obtain a U.S. patent. The last thing you want is for your own public disclosures to bar you from obtaining a patent.
The bottom line – provisional patent applications are worth the money and can save you lots of headaches down the road if they are done correctly.