THE ONLINE INVENTOR – January 20, 2009 issue

(c) 2009 Market Launchers, Inc.


Editor:  Paul Niemann


Dear Inventor –  

We all make our New Year’s resolutions, and one of the things that I’m going to do differently this year is that I’m going to bring in more guest contributors to our humble little newsletter.  

We start off the New Year with Ron Reardon, a patent agent who is also President of the United Inventors Association as well as past-president of the Inventors Club of Georgia. He has some good stuff – well worth reading.

Now, on with this week’s issue …

Best Regards,
Paul Niemann

Paul Niemann


CLEVER QUOTE:  “Don’t worry about genius. Don’t worry about being clever. Place your trust in hard work, perseverance and determination.”… Sir Frederick Treves


“Things You Should Know About Provisionals,”
by Ron Reardon of Patents & More, Inc.

Like moths drawn to a flame, many individual inventors are drawn to the low cost and less formality promised by a provisional patent application. Inventor clubs, self-help books and Patent-It-Yourself software fuel this flame by touting that a Patent Attorney/Agent is not needed to get Patent Pending status and move your invention into the market place.

Much has been said about the positive aspects of provisional applications:

 Lower filing fee
 Patent Pending status for 1 year
 Allows you to move ahead with getting your invention into the marketplace
 Does not have to be in a particular format
 Formal drawings not required
 Fewer Patent Office forms required
 Can effectively have 21 years of patent term instead of 20
 Keeps your foreign patent options open
 Is not published or examined by the Patent Office

Individual inventors are naturally suspicious when Patent Attorneys/Agents warn of the potential dangers of an inventor-crafted provisional application. Are they telling the truth, or simply trying to line their pockets with the Inventor’s hard-earned cash?

Since I am an inventor myself (7 patents pending), Secretary of the Inventor Associates of Georgia, as well as a Registered Patent Agent with the U.S. Patent & Trademark Office, I can see both sides of this issue. I have listed the positive aspects above. Read on so you are properly armed to make the decision that is best for your situation; whether it is to write your own provisional application or to engage a patent practitioner.

1.         There is no such thing as a provisional patent.

You do not have patent rights until a non-provisional patent application issues as a patent. Intellectual property rights are granted by the government, in this case, by the Patent Office. When you get the notice of allowance, pay the issue fee and receive your issued patent in the mail, then you have patent rights that you can license. These rights are the right to prevent others from making, selling, using or importing your invention.

2.         Remember to file a non-provisional application on or before one year after the filing date of your provisional application and be able to claim the filing date of the provision application.

You must properly file a non-provisional application claiming priority to the provisional application on or before the one year anniversary of the filing date of your provisional application. If the one year anniversary falls on a weekend or Federal holiday, you must properly file on of before the next business day after that date. If you get busy and forget about the one year time limit, you may lose the right to get a patent.

Note: your filing date is the date that the Patent Office RECEIVES your application, unless you use the U.S. Post Office Express Mail Post-Office-To-Addressee option or the Electronic-Filing option, in which case your filing date is the date sent.

3.         If you sold, offered to sell, publicly used or publicly disclosed your invention BEFORE filing the provisional application you do not have one year to file the non-provisional application.

You have one year from the earliest date of selling, offering to sell, public use or public disclosure to properly file a non-provisional application, or you lose the right to ever get a patent.

(continued after the break)


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4.         If your non-provisional application contains information that was not in your provision application, claims directed towards that information will have the filing date of the non-provisional application, not the filing date of the provisional application.

The Patent Office will rightly consider these claims as new matter and will search for prior art or other bars to patentability using the date of the later filed non-provisional. Claims that are properly supported by provisional application will be searched based on the filing date of the provisional application.

5.         Filing a provisional without claims is allowed, but is risky.

Claims in the later filed non-provisional application MUST find support in the provisional application, or will either be disallowed or not permitted to use the filing date of the provisional application. Additionally, the best mode and enablement requirements for the provisional application are exactly the same as for the non-provisional. The examiner determines if the best mode and enablement requirements are met by first examining the claims. If you have no claims in the provisional, how will you know if these requirements were met?

6.         The provisional application must have sufficient detail that a person of average skill in the art area of the invention could make and use the invention without undue experimentation.

Just jotting down your concept and shipping your provisional application to the Patent Office could bring heartache later. You must show that you have command of your invention, whether it has actually been built or not. For example: Step 1: Insert bar of lead into container; Step 2: Do some chemistry stuff; Step 3: Remove bar of gold from container. You will need to show further detail on Step 2 if you expect to pass the test on enablement.

7.         The provisional application should address the issue of non-obviousness.

The most common rejection from the Patent Office is that the invention is obvious. The Examiner will cite Patent A, combined with Patent B, combined with Patent C, and state that your invention is obvious in view of these patents. It takes a professional prior art search, combined with a patentability opinion to carefully craft the claims and the specification to avoid the prior art, and/or to have a response than can overcome the objection of obviousness. Otherwise, you may have a rude awakening down the road when your non-provisional application is rejected and you say: If I had only known!

If you are going to file your own provisional application, pay attention to what is listed above. No matter how hurried you are, put on your thinking cap and imagine what will be claimed. A better approach is to draft actual claims and then write a specification that fully supports those claims. I know that this requires more effort, but to paraphrase a popular oil filter commercial of yesteryear: You can pay now, or you can really pay later!

One final thought: Inventors' Digest's ninth commandment of Inventing says it best: Do what you do well and hire pros to do the rest. When it is your invention and your money, use your best judgment as to whether you have the skill to draft your own provisional application or whether you should bite the bullet and engage a patent professional

# # #

Ron Reardon is a patent agent and President of Patents & More, Inc. in Atlanta , Georgia , and is President of the United Inventors Association as well as past-president of the Inventors Club of Georgia . He works with inventors who have products in the following areas: Mechanical, electrical, business methods and software. Contact him at 770-241-4907 or by e-mail at [email protected]  or visit him online at http://www.patentsandmore.com 


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