How Much Protection Does the $99 Provisional Patent Application Really Provide?

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Patent Expert Takes a Closer Look at Risks Versus Benefits

There are lower-cost alternatives to formal patent applications that do not involve any particular format requirements, but the risk of not having a patent application reviewed by a patent practitioner can be significant.

While there is a place for the provisional patent application, the multitude of websites offering low cost, easy-to-issue patent protection may not provide the protection needed to safeguard an invention if something goes wrong in the application process, according to Michael Gzybowski, an intellectual property attorney with Brinks Hofer Gilson & Lione, one of the nation’s largest intellectual property law firms. Gzybowski, who served as a patent examiner at the U.S. Patent and Trademark Office (USPTO) prior to entering private practice more than 20 years ago, analyzed the provisional patent application process and checked out numerous websites claiming expertise and easy patent protection. His conclusion is to advise inventors to be sure they understand the full risks and benefits of this approach to obtaining IP protection.

“There are lower-cost alternatives to formal patent applications that do not involve any particular format requirements, but the risk of not having a patent application reviewed by a patent practitioner can be significant,” Mr. Gzybowski cautions. “A defective application can result in losing protection and the rights to an invention, a cost far greater than the investment of a thorough, up-front patent review.”

While the USPTO promotes benefits in using the provisional patent application, these benefits apply only to applications that are converted into formal or non-provisional patent applications within 12 months from the provisional patent filing date. The USPTO also puts the burden on the applicant to keep track and convert the provisional patent application into a formal one.

Mr. Gzybowski advises that applicants consider the following factors before filing a provisional patent application through the Internet:

1)    Websites only offer thumbnail explanations of the legal requirements. Be sure to understand the whole picture.

2)    Although there is no particular format requirement, provisional patent applications still have to meet the requirements of Title 35 of the U.S. Code (35 USC) and Title 37 of the Code of Federal Regulations (37 CFR) including written description, enablement and best mode requirements, and artwork/drawings when appropriate. Failure to meet any of these terms can result in a “fatally defective” provisional patent application. Attempts at making corrections when converting to a formal application may result in “new matter” rejections, preventing an applicant from being able to correct and salvage a defective provisional patent application.

3)    Websites often promote that inventors may use “patent pending” notices in conjunction with their inventions. These notices do not provide any enforceable rights against third parties; they are only for granted patents. Continuous use of a “patent pending” notice based on a provisional patent application that has not been converted into a formal application within 12 months of its filing date can expose the applicant to false marking claims including penalties of up to $500 for every falsely marked product.

According to Mr. Gzybowski, these considerations apply to large and small companies, as well as to individual inventors. Provisional patent applications should be carefully considered by all patent applicants and used only in appropriate situations such as: When a filing date is needed quickly before an invention becomes available to the public; a filing date is needed before an invention has been used publicly or offered for sale in the U.S. or published more than one year prior; or if an inventor wishes to “test the water” and determine the commercial viability of an invention before more money is invested in preparing and filing a formal patent application.

Brinks Hofer Gilson & Lione is one of the largest intellectual property law firms in the United States and serves the intellectual property needs of clients around the world. Brinks has 150 attorneys, scientific advisors and patent agents who specialize in intellectual property litigation and all aspects of patent, trademark and copyright law. The firm also advises on issues relating to intellectual asset management, trade secret, unfair competition, and technology and licensing agreements. Brinks routinely handles assignments for companies in the electrical, chemical, and mechanical engineering sectors; the biotechnology, pharmaceutical and nanotechnology industries; and for companies whose work relates to Internet and computer technology law. The firm’s trademark practice works on behalf of clients who deal in a wide variety of products and services. Founded in 1917, Brinks is based in Chicago and has five additional offices across the country, including its newest office in Washington D.C. More information is available at http://www.usebrinks.com.

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Barbara Fornasiero
EA Focus
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