Patent Pending in 24 Hours

Overview

Take the first step to protecting your invention!

Ready to stamp "patent pending" on your invention? Then you need to file a provisional patent application (PPA), an inexpensive way to claim your hard work. With a PPA, you'll have time to figure out whether you can make a profit from your creation before you invest more time and money.

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Overview

Take the first step to protecting your invention!

Ready to stamp "patent pending" on your invention? Then you need to file a provisional patent application (PPA), an inexpensive way to claim your hard work. With a PPA, you'll have time to figure out whether you can make a profit from your creation before you invest more time and money.

With Patent Pending in 24 Hours, you have all the forms and information you need to get the job done!  Find out how to:
. evaluate hurdles to patentability
. write a clear PPA
. prepare informal drawings of your invention
. conduct a patent search  online
. understand basic patent law
. complete all forms required by the U.S. Patent and Trademark Office
. file your application
. modify your invention after filing

The book also includes important legal forms to help you preserve your rights when showing or selling your invention:
. nondisclosure agreement
. patent assignment
. prototype-maker agreement
. joint-ownership agreement

This edition is completely revised with updated case law and patent regulations, updated patent searching information and additional resources. The first book to cover huge legislative changes to American patent law, taking effect throughout 2012 and 2013

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Editorial Reviews

From the Publisher
"Includes all the forms and advice needed to conduct a patent search online, understand basic patent law and file an application."  Library Bookwatch 
Library Bookwatch
"Includes all the forms and advice needed to conduct a patent search online, understand basic patent law and file an application."
Sarasota-Herald-Tribune
"Even if you do decide to hire an attorney to protect your invention reading this book could save you a lot of billable hours."
Library BookWatch
Includes all the forms and advice needed to conduct a patent search online, understand basic patent law and file an application.
Sarasota Herald-Tribune
Even if you do decide to hire an attorney to protect your invention... reading this book could save you a lot of billable hours.
Ron Docie
A great resource for inventors who want to quickly, efficiently and safely protect their precious ideas.
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Product Details

  • ISBN-13: 9781413317565
  • Publisher: NOLO
  • Publication date: 11/30/2012
  • Edition description: Sixth Edition
  • Edition number: 6
  • Pages: 442
  • Sales rank: 482,550
  • Product dimensions: 7.00 (w) x 8.90 (h) x 1.10 (d)

Meet the Author

Richard Stim specializes in small business, copyright, patents, and trademark issues at Nolo. He practices law in San Francisco and has represented photographers, software developers, crafts people, publishers, musicians, and toy designers. He is the author of many books, including Music Law, and Profit From Your Idea. Stim also produces audiobooks, and performs and records with two bands.

And San Francisco Patent Attorney David Pressman is a graduate of Penn State University (BSEE) and George Washington University Law School (JD) where he was on the Law Review. He has over 40 years of experience in the patent profession — as a patent examiner for the U.S. Patent Office, a patent attorney in corporate and private practice, a university instructor, a columnist, and as author of the Patent and Trademark entries to the World Book Encyclopedia. He is an expert on patent filing, prosecution, and licensing and his books have charted the path for over 250,000 inventors. Patent It Yourself is the most highly recommended guide to patenting an invention. David is also co-author of The Inventor's Notebook (with Fred Grissom), How to Make Patent Drawings Yourself (with Jack Lo), Patent Pending In 24 Hours (with Rich Stim), and Patents For Beginners (with Rich Stim).

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Read an Excerpt

Introduction

"You don't get up in the morning and say I'm going to invent something. It doesn't work like that. What might happen is you might trip over the carpet. And you think to yourself, 'I'll go and nail the carpet down.' And as you walk into your workshop, you think, 'I haven't finished paying for the carpet yet so I can't put nails through it. So, suppose I screw to the edge of the deck, a piece of plastic that would hold the carpet down. Then it could look neat and stop me from tripping over the carpet.' That's how an invention comes about."
-- Trevor Bayliss (inventor of the Freeplay radio), interview on Todd Mundt Radio Show, February 8, 2001

Congratulations -- you invented something! So what's next? If you're like most inventors, your first concern is to take steps to make sure nobody can steal your great idea.

There used to be only one foolproof way to put the world on notice that you claimed ownership of an invention: filing a patent application. Getting a patent gives you the right to prevent others from making, using or selling your invention for a limited period of time. But this protection comes at a price: you can expect to spend anywhere from $5,000 to $10,000 or more to file a patent application. And because fewer than 3% of all patented inventions ever make any money, you might never see a return on your investment. This puts some inventors in a bind: if they don't file for a patent right away, someone else might steal their idea. But if they file too soon, they risk spending money on legal protection for an invention that may not be commercial.

Wouldn't it be great if there was an inexpensive way to establish a claim to your invention before filing for a patent -- so you could figure out whether your invention would turn a profit before you pay to protect it? Well, there is -- the provisional patent application.

In this chapter we'll explain the benefits -- and the disadvantages -- of filing a provisional patent application. To give you an idea of what a provisional patent application looks like, we've also included two examples in Section E, one based on William Lear's car radio, and the other based on Louis Pasteur's process for improving beer and ale (later to be known as "pasteurization").

After reading this book, you may decide that the provisional patent application is not for you. You may determine that your invention lacks commercial potential or is not patentable. Regardless of whether you ultimately file a provisional patent application, this book will help you see your invention in a wider context -- in relation to patent law, licensing opportunities and other inventions within your field -- rather than just as an isolated creation on your workbench.

How a Provisional Patent Application Works

In 1995, President Clinton signed a law that allows inventors to file a provisional patent application. This process offers an effective, fast and cheap way to safeguard your place in line at the United States Patent and Trademark Office (USPTO) until you file a regular patent application.

A provisional patent application consists of text and drawings that describe how to make and use your invention. It's a short document -- often 5-10 pages -- written in plain English, not the arcane language associated with regular patent applications. In fact, if you've written a technical article that accurately describes how to make and use your invention, you can submit that as part of your application. You do not need to hire a draftsperson to prepare formal drawings; you can furnish informal drawings as long as they -- in conjunction with your written statement -- show how to make and use your invention. As soon as you send the description, the drawings and a cover sheet to the USPTO by USPS Express Mail (along with the $80 fee), you establish an effective filing date for your invention and you can use the term patent pending on your invention -- at least for 12 months from the filing date.

Some Patent Basics

In case you're not familiar with patent law, here are a few basics that will help you understand the material in this chapter. (We discuss patent law in more detail in Chapter 2.)

Utility patents are granted for inventions. The U.S. Patent Office issues three types of patents -- utility patents, plant patents and design patents. Utility patents protect what we commonly think of as "inventions." When we use the term "patents" in this book, we are always talking about utility patents, unless otherwise noted.

An invention can be virtually anything that's functional. Utility patents protect a broad range of inventions -- mechanical devices, medical procedures, chemical formulas, methods of doing business, software programs, animal and plant life and improvements on past inventions can all qualify for utility patents.

Your invention must be new. The USPTO grants patents for new inventions only. Your invention isn't new if someone previously invented it or wrote about it, or if at least a year has passed since it was first publicly disclosed or sold.

A patent is a "license to sue." If you get a patent, you can stop others from making, selling or using your invention for 17-18 years. Think of your patent as a "hunting license" -- one that gives you the right to sue infringers for damages and other legal remedies.

A provisional patent application will not, by itself, get you a patent. In order to patent your invention and obtain some of the benefits listed above, you must file a regular patent application -- a more complex document -- and the patent must be approved by the United States Patent and Trademark Office. The provisional patent application is a simple, inexpensive strategy for preserving your rights while you decide whether to file for a regular patent. But if you want that patent, you will have to file a regular application within a year after you file your provisional application.

What If You Don't File Your Regular Application on Time?

You won't automatically lose patent rights if you fail to file a regular patent application within a year after you file the provisional application. But you will lose the benefits we describe in this chapter -- for example, the earlier filing date and the right to claim "patent pending" status. You can still file a regular patent and acquire patent rights to your invention, as long as you did not publish information about your invention or offer it for sale more than a year before you filed the regular patent application.

 
Federal Circuit Requires Clarity in Provisional Patent Applications

A week before this book went to press, the Federal Circuit Court of Appeals -- the federal appeals court that specializes in patent cases -- issued its first ruling involving provisional patent applications. The case, New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., App. No. 02-1028 (7/30/02) (www.fedcir. gov/opinions/02-1028.doc) involved two patents: one for a drill bit for horizontal directional drilling of rock formations and the other for a method of horizontal directional drilling. Both patents claimed the filing date of a provisional patent application. The lawsuit occurred when New Railhead Manufacturing, the company that owned the patents, pursued a company it believed was infringing.

At the heart of both patents was an invention in which a drill bit was angled with respect to its housing (known as a "sonde housing") and operated at a specific heel-to-toe ratio. The court of appeals ruled that the underlying provisional patent application failed to adequately describe the angled structure of the drill bits, and therefore, the company that filed the patents could not get the benefit of the provisional filing date. The court wrote, "the provisional [patent application] never states that the drill bit is angled with respect to the sonde housing, does not mention or describe the toe or the heel, and does not mention or define the heel-toe ratio." The court of appeals invalidated the provisionals. Unfortunately New Railhead Manufacturing had made offers for sale prior to filing its provisional applications and as a result of the one-year sale rule (described in the 3M case in this chapter), both patents were invalidated.

The New Railhead case reinforces the principles we have described in this chapter -- if you want the benefit of the provisional filing date for a later patent, your provisional application must describe the invention in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use it. If you leave out an element of your invention, fail to explain all of the operating elements, or your later patent application adds new matter, you won't be credited with the earlier filing date. As we mention in Section D, we recommend that you make clarity, not speed, your number one priority when preparing your provisional patent application. If, after preparing your provisional patent application, you are in doubt as to whether it meets the legal requirements, seek the advice of a patent professional. Information about locating an attorney can be found in Appendix E.

Patent It Yourself. Some readers may find it helpful to use David Pressman's Patent It Yourself (Nolo) as a companion resource while using this book to prepare your provisional patent application. Patent It Yourself provides in-depth instructions for preparing provisional and regular patent applications as well as extensive information on topics such as commercializing your invention, drafting patent claims and corresponding with the USPTO.

Advantages of Filing a Provisional Patent Application

Filing a provisional patent application confers a number of benefits:

  • you can take up to a year to assess whether your invention will sell before committing to the higher cost of filing and prosecuting (the official term for "pursuing") a regular application for a patent
  • you can use a "Patent Pending" notice to protect your invention from theft
  • you can avoid building and testing your invention
  • you establish an official United States patent application filing date for the invention
  • your application is preserved in confidence, and
  • the expiration date of your patent is extended, if the USPTO later approves your application.

We discuss each of these benefits in detail in the sections that follow.

1. Assess the Commercial Potential of Your Invention Before Filing for a Patent

Alexander Graham Bell almost didn't get the patent for the telephone. On the day that he filed his patent application, a rival inventor, Elisha Gray, filed for the same invention. Historians attribute Bell's victory at the USPTO to several factors (see Appendix A, Section B), the most important of which was that Gray never bothered to fight for the patent. Gray, a businessman, didn't believe that the telephone had any commercial potential and filed his patent documents as an afterthought. He believed (as did his business partners and attorneys) that the telephone was a novelty not worth pursuing.

Gray and his attorneys were wrong about the commercial potential of the telephone (as was Western Union, who turned down an offer to buy Bell's patent for $100,000). Two years later, when the patent's value became clear, Western Union backed Gray in an unsuccessful lawsuit to terminate the Bell patent.

But it's unfair to judge Gray harshly in hindsight. Determining the commercial potential of an invention can be difficult -- sometimes even impossible -- until you've actually tried to sell it.

Considering that fewer than 3% of all patents ever make money, the vast majority of inventors probably shouldn't bother with the time and expense of filing a patent application. Unfortunately, inventors cannot predict whether they'll fall into that lucky 3%. What if the invention is a commercial success but no patent protects it from being stolen by others? Inventors dutifully prepare and file patent applications as insurance against this possibility.

Once you file the provisional patent application, you will have a year to assess the commercial potential of your invention before you have to prepare a patent application. Although 12 months may not give you enough time to obtain a firm commitment from a manufacturer or distributor -- many companies take months, if not years, to make such decisions -- it should be enough time to make a preliminary assessment about commercial potential. If everybody you've shown it to says "no thanks" and backs away from you slowly, there's probably no reason to bother filing a regular patent application. In that case, you will lose your $80 filing fee -- but you will save the hundreds, maybe thousands of dollars you would have spent preparing the patent application.

Watch Out for Scam Artists

The Dallas Morning News included the following statement in an article:

"Many young companies don't have the money now to seek out a permanent patent -- which can cost $10,000 to $15,000 per application -- and are asking Mr. Klinger to help them get a one-year patent. Provisional patents cost less than $1,000 to file."

Oops! As you know by now, the provisional patent application does not, by itself, get you a patent; it provides a record of your invention that you can rely on -- at least for 12 months -- to support a regular patent application.

But misconceptions about provisional patent applications reappear with such frequency -- even in newspapers -- that a lot of inventors believe them. It's no wonder that scam invention promotion companies can prey on unknowing inventors by claiming that a provisional application or a filing under the USPTO's Document Disclosure Program (see sidebar "Turning on the Light Bulb: Documenting Conception") will get you patent rights. The USPTO website (www.uspto.gov) and the Federal Trade Commission website (www.ftc.gov) both offer tips on how to avoid disreputable invention promotion companies.

2. Use a "Patent Pending" Notice to Warn Potential Thieves

There's a certain cachet to labeling your invention "patent pending" or "patent applied for." Putting those words on the bottom of your invention or in an advertisement sends a message that you've filed an official claim on the invention. This marking often deters manufacturers from stealing your invention -- they do not want to pay for creating tooling or molds to produce the invention if they know you may get a patent for it.

In Alexander Graham Bell's day, the only way you could claim "patent pending" status was to pay an attorney to prepare and file a regular patent application. Nowadays, you can use the label once you have filed a provisional patent application. (Using the terms "patent pending" or "patent applied for" without filing an application is a criminal offense.)

Keep in mind that marking your invention "patent pending" doesn't give you any patent rights. You cannot stop anyone from copying, selling or using your invention during this period. Patent rights do not kick in until after your regular patent application is approved. The label simply lets the world know that you have staked a patent claim and are waiting for the patent to issue. As we explain in Section B5, under certain circumstances -- if you file a regular patent application that is published by the USPTO before the patent is granted -- you may be able to sue for damages during part of the pendency period.

3. Provide an Alternative to Building and Testing Your Invention

The U.S. follows the "first to invent" rule. If there is a dispute between you and another inventor, the person with the earliest date of invention gets the patent. The patent laws establish your date of invention as either:

  • the date when you "reduced your invention to practice" -- that is, the date on which you could prove that it actually works (we'll explain below), or
  • the date you conceived of your invention, provided that you diligently reduced it to practice soon after (see sidebar "Turning on the Light Bulb: Documenting Conception").
You have reduced your invention to practice once you can demonstrate that it works. The USPTO accepts any of three dates as the date of reduction to practice:
  • the date you actually finished building and testing your invention
  • the date you filed a regular patent application, or
  • the date you filed a provisional patent application.

The key to beating out rival inventors who claim priority is to act quickly, before they can claim the prize. Once you conceive of an invention, make a record of it as described in Chapter 2, Section B. Having a brilliant idea is not enough -- you have to document and pursue your idea to protect your ownership rights.

EXAMPLE: Alphonse Eugene Beau de Rochas conceived of the four-stroke internal combustion engine in 1862. But the patent went to Nikolaus Otto, who improved on the concept and was the first person to successfully build and test a working model of a four-stroke engine in 1876. De Rochas conceived of the engine but Otto conceived of an important improvement -- and reduced the engine to practice.

The earlier you can build and test your invention, the better -- that guarantees you the earliest date of invention (provided of course that your proof is documented and witnessed). But not all inventors can afford to create working prototypes and build and test their inventions. And not all inventors are diligent about maintaining witnessed notebooks to evidence the date of conception. Even if you believe your notebooks provide adequate documentation, a court may later disagree.

EXAMPLE: An inventor filed a patent application for a biotech invention known as a fusion protein. The application was filed three months after a similar application. When a dispute arose, the inventor who filed later tried to prove he had reduced his invention to practice first, using his lab notebooks and witness testimony as evidence. A federal court of appeals ruled that his evidence was inconclusive because it failed to show that he had completed every step required to complete the fusion protein. Schendel v. Curtis, 83 F.3d 1399, (Fed. Cir. 1996)

You may be certain that your invention will work even if you haven't perfected your prototype. For example, although Alexander Graham Bell had transmitted tones through wires, he had not transmitted speech at the time he received his patent for the telephone in 1876. (The famous "Come here Watson, I want you" conversation didn't happen until a month later, when Bell built a working model.) Even the Wright Brothers had not flown when they applied for their groundbreaking aeronautical patents. Their famed Kitty Hawk adventure occurred nine months later, on March 23, 1903.

Fortunately, there's an easier way to prove reduction to practice than building a prototype. It's known as "constructive reduction to practice" and you accomplish it by simply filing a provisional patent application (or a regular patent application). If you do a constructive reduction to practice, your date of invention is the date you filed your patent application. In other words, if you can't build and test your invention, you can still establish your date of invention without spending the time and money required to file a regular patent application.

There is a potential downside to using the provisional patent application for constructive reduction to practice as described above. Without a working prototype, you may not be able to convince others to license and manufacture your invention. If you really want to market your invention, you will probably have to create a prototype eventually.

Even if you've already built and tested a working model of your invention, you can still file a provisional patent application to claim the other benefits described in this chapter (or you can file a regular patent application to obtain the patent).

Turning on the Light Bulb: Documenting Conception

At what point does an inventor conceive of an idea? Thomas Edison supposedly conceived of the idea of using carbon as the filament for his light bulb on October 21, 1879. According to legend, it was on this day -- later memorialized in a Hollywood movie -- that Edison gazed at a piece of lampblack and absent-mindedly rolled it back and forth his fingers until it formed a filament. Power companies later celebrated this day as "Electric Light Day."

Although Edison was fond of recounting the tale, there are no records of his brilliant conception. Edison's lab notebooks and other records from his famous laboratory show no such occurrence on that date. In fact, it's even doubtful that Edison conceived of the idea of the carbon filament, since he read about such an idea in Scientific American two years earlier (according to Ira Flatow, They All Laughed, 22 (1992)

If you intend to prove your date of conception, you will have to do better than Thomas Edison. You must provide accurate documentation of the conception of your idea. If you fail to do so, your date of invention will be either the date you actually reduce your invention to practice or the date you constructively reduce it to practice -- that is, the date on which you file a provisional or regular patent application.

You can accomplish proper documentation of conception by using an inventor's notebook (see Chapter 2) or by filing a signed disclosure document under the USPTO's Document Disclosure Program.

4. Establish an Official United States Patent Application Filing Date for Your Invention

Filing a provisional patent application gives you an official patent filing date. As explained above, the USPTO awards patents to the first to invent, not the first to file a patent application. But don't let this rule lull you into complacency -- if you want a patent, you should get to the patent office as early as possible. According to many patent experts, the first person to file at the USPTO will often win the battle over who was first to invent something (known as "priority").

3M Is 2 Late

To give you an example of how important the filing date can be, consider the problems 3M encountered when it developed a method for perforating carbonless paper. In July, 1989, 3M arranged to manufacture 10,000 forms using their newly developed laser-perforated sheets and distributed the forms for use within 3M. The company filed for a patent more than a year later, on August 17, 1990.

Unfortunately for 3M, the law prohibits you from getting a patent if: (1) your invention was known publicly or used commercially before your date of invention, or (2) you waited more than a year after the invention information was available to file a patent application. This statute guarantees that patented inventions will be new and different from already existing knowledge (the "prior art") and encourages inventors to file for a patent quickly once sales start.

3M's patent was invalidated when the company revealed during a court case that its invention had been "in public use" more than one year prior to the date it filed its patent application. Minnesota Mining and Manufacturing Company v. Appleton Papers Inc., 35 F. Supp. 2d 1138 (1999 D. Minn.).

Back in 1989, the only way 3M could have preserved its rights was to file a patent application within a year of July 1989. Nowadays, companies have an easier and cheaper way to preserve their rights: filing a provisional patent application within a year of the first use. The provisional patent application establishes the official patent filing date.

If you know that a description of your invention will be published or displayed, or if you plan on selling or using your invention, you can preserve your patent rights by filing a provisional patent application within a year of that public disclosure or sale.

EXAMPLE: Bob built and tested a mobile telephone switching system. He plans on first publishing a description of his invention in the Journal of Mobile Telephony on February 20, 2003. In the old days (before 1995), Bob would have had to file his patent application by February 19, 2004 -- within one year of his public disclosure. Instead, he files a provisional patent application on February 19, 2004. He then waits another year and files his regular patent application on February 18, 2005. Effectively, Bob can squeeze in two years of test sales and still preserve his filing date of February 19, 2004.

The filing date is also important for another reason. If your patent later issues, it becomes part of the prior art against which other patent applications are judged. The date your invention becomes prior art (known as the "102(e) date" because it references 35 U.S.C. § 102(e) of the patent law) is the date you filed your provisional patent application. Other inventors who try to patent the same invention must prove that they invented their creation before you filed your provisional patent application.

EXAMPLE: Bob files a provisional patent application on February 19, 2003. He then waits a year and files his regular patent application on February 18, 2004. The USPTO later issues him a patent. Sam is testing a mobile telephone switching system identical to Bob's invention but he doesn't finish building or testing his invention until March 1, 2003. Bob's provisional patent application will be considered prior art and can be used to block Sam's application.

The filing date works in connection with your date of invention and your date of disclosure. The provisional patent application works both defensively, by giving you more time to file a regular patent application following public disclosures, and offensively, by preventing other inventors from arguing that they came up with the same idea before you filed your provisional patent application. In Chapters 2 and 3, we talk more about the effect of prior art on patent applications.

5. Preserve Your Application in Confidence

If you're like most inventors, you have a secretive streak. And that makes sense -- after all, if word got out about your invention, somebody else might claim rights or instigate a dispute at the USPTO. Because of this, most inventors won't disclose anything about their inventions, except under the terms of a signed nondisclosure agreement. (We provide suggestions for a nondisclosure agreement in Appendix B to this book.)

The provisional patent application guards your secrecy while preserving your rights at the USPTO. Nobody at the USPTO will read your provisional patent application unless (1) you file a regular application within 12 months, and (2) a dispute arises as to your rights. Otherwise, the provisional patent application will sit safely tucked away in a file cabinet.

If you file a regular patent application, the USPTO will treat that application with secrecy for the first 18 months of the examining process. Approximately 18 months after you file your regular patent application, the USPTO will publish your patent (unless you requested nonpublication at the time you filed). Publication can be a good thing. It paves the way for you to sue later (after you get your patent) for infringements that occurred after the patent is published. On the other hand, it can be a bad thing if your secrets are released, but your patent isn't granted.

Please Mr. Postman

According to inventors' lore, you can prove the date of your invention by describing your invention and mailing a copy of the description to yourself. Supposedly the postmark on the sealed envelope proves your date of invention. Our advice -- Fuggidaboutit! The courts and the USPTO refuse to accept such "Post-Office Patents" as evidence of patent priority.

6. Extend the Expiration Date of Any Patent That Later Issues

Your patent ends 20 years after the date you file your regular patent application. However, you don't get 20 years of patent rights. Because the USPTO takes approximately 12 to 24 months to complete the examination, and because you don't get any rights until the patent actually issues, most patent owners will only have 17 to 18 years of patent rights. That's unfortunate because many inventions enjoy their best commercial returns during the final years of the patent.

Filing a provisional patent application can stop the clock for at least a year on patent examination. Your 20-year term starts from the date you file your regular patent application, not your provisional patent application. So your patent rights, if the patent issues, end one year later than they would have if you filed a regular patent application instead of a provisional.

EXAMPLE: Loren files a regular patent application on March 1, 2002. If her patent is approved, it will expire on March 1, 2022. If Loren files a provisional patent application for her invention on March 1, 2002 and then waits a year to file her regular patent application, the resulting patent will expire on March 1, 2023.

7. Advantages for Foreign Applicants

Inventors living outside the U.S. can also benefit from filing a provisional patent application. Here's why:

  • Unlike a regular patent application (that must be filed in English), a provisional patent application can be filed in any language.

  • Like their U.S. counterparts, the foreign inventor can obtain the earliest possible prior art date -- the date against which competing patent applications will be judged.

  • If the foreign inventor files the provisional patent application and the home country patent application at the same time, the foreign inventor -- like the U.S. inventor -- can preserve ownership rights in the U.S. and extend the life of the U.S. patent, as discussed in Section B6.

Potential Disadvantages of Filing a Provisional Application

After reading about all of the advantages we've described, you're probably ready to sharpen your pencil and get down to work on your provisional patent application. But before you do, there are some potential drawbacks you should be aware of.

1. Inaccuracy Will Undo Your Protection

If your provisional application fails to explain how to make and use your invention, you can't count on it for any of the purposes described in this chapter -- for example, an early filing date, proof of invention or constructive reduction to practice. Leaving out an element of your invention or failing to explain all of the operating elements could be fatal inaccuracies. Other inaccuracies include using faulty supporting data or drawings that don't match the written description. Deliberate inaccuracies will also destroy your patent hopes -- for example, if you are not the true inventor or you filed even though you knew the invention did not qualify for a patent.

2. Modifications Require a New Provisional Application

If you modify the manner in which your invention operates or add any new technical information that was not in the provisional application (known as "new matter"), you cannot rely on the provisional patent application. You can file a new provisional application that reflects these changes. Adding, subtracting, modifying parts or changing the structure or operation of the parts would all qualify as modifications. Your previously filed provisional patent application will not protect these new developments.

3. You Must File Foreign Patent Claims Within a Year

If you fail to file for foreign patent protection within one year of your provisional patent application filing date, you must file patent applications in any countries in which you seek patent protection. If you don't, you will lose any claim to use your U.S. filing date in foreign countries. If you miss the one-year deadline, you can still file in foreign countries -- provided you have not sold, publicly used or published your invention before the foreign filing date -- but you must claim a later filing date. This could be a problem if, during the period between your U.S. and foreign filing, someone else filed for a similar invention. Since the U.S. accounts for one-quarter to one-third of all sales for most patented inventions, many inventors are not interested in pursuing foreign patent rights. However, if you think that a foreign manufacturer may want licensing rights, it's generally a good idea to preserve your foreign patent rights. We discuss foreign patents in more detail in Chapter 6.

Preparing Your Provisional Patent Application

Believe it or not, you really can get your provisional patent application on file within 24 hours, as promised in the title of this book. But your overriding concern should not be speed; it should be accuracy. How fast you prepare and file your provisional patent application will depend on your knowledge of patent law, your familiarity with inventions similar to yours and your ability to accurately describe your invention.

In order to properly prepare a provisional patent application, you will have to:

  • learn some patent law basics
  • learn about the prior art for your invention, and
  • accurately describe how to make and use your invention.

That's a tall order and we've only got about 23 hours left, so we'd better get started. But before we do, here are examples of provisional patent applications for two historic inventions. We made these up to give you a sense of what a provisional application should look like.

Drinking Beer and Listening to the Car Radio: Two Provisional Patent Applications

If you like drinking beer or listening to the car radio you can thank Louis Pasteur and William H. Lear. There were no provisional patent applications available when these men created their inventions -- both Pasteur and Lear filed regular patent applications to preserve their rights. In order to give you an idea of how simple it can be to draft a provisional patent application, we have reduced these two patents to provisional applications. The full text of each patent is included in the Appendix so that you can compare these with the real patents. We've included the original patent drawings with each provisional patent application but, as we explain in Chapter 4, you can furnish less formal drawings. You will find more examples of provisional applications of famous (and not-so famous) inventions in Appendix A.

1. Pasteur's Improvement to Making Beer (Pasteurization)

Background: Prior to Louis Pasteur's invention, the production of beer was hindered because the boiled extract or seasoned hop (known as "the wort") was exposed to air. That exposure affected the quality and amount of beer produced as well as the stability of the beer -- that is, how fast it spoiled.

Pasteur discovered that by preventing exposure to air, a larger quantity and better quality of beer could be produced. Pasteur's process -- later known as pasteurization -- partially sterilized the beer and subsequently was used to sterilize liquids such as milk and orange juice, as well as cheese. His improvement in Brewing Beer and Ale was patented in France in 1871 and in the U.S. in January 1873.

A Provisional Patent Application for "Pasteurization"

I discovered a better way to brew beer and ale. My process prevents the wort (the boiled extract of malt or material seasoned with malt or other qualifying ingredient seasoned with hops) from exposure to air. The result -- compared to existing methods of beer production -- is the production of a larger quantity of beer as well as a beer that is more aromatic and less likely to deteriorate in transit or storage.

I accomplish this by expelling the air from the boiled wort while it is confined in a closed vessel (or vessels).

The attached drawing helps to explain my invention. Three casks AAA (Fig. 1), made of iron, wood, or other suitable materials, are supported on stands below a water pipe E. The water pipe has branches, each with a valve, and at the end of each branch, a flexible hose and spray nozzle P. On another stand T is an apparatus MM that generates carbonic-acid gas. The carbonic gas is supplied to the casks and is released from the casks at the escape tubes X which extend into cups or chambers V from which the gas can be collected by a gasometer.

The wort is prepared in the usual manner and while boiling hot is placed in a cask. Carbonic-acid gas is conveyed into the cask for the purpose of expelling air. There must be a thorough penetration of carbonic-acid gas into the liquid to expel all contained beer.

Then, the water pipe sprays the cask to cool it. A trough C is placed below the casks to collect the water. As the temperature is reduced to about 20 to 23 degrees Celsius (68-73 degrees Fahrenheit), the yeast or fermenting material is added to induce fermentation. After first fermentation, the beer can be sent through the valves R into casks or barrels for future use.

The beer does not have to be removed and fermentation can be completed in the cask. But in this case, a small quantity of air may be drawn into the cask to speed fermentation. The air drawn into the tube should be filtered through cotton or passed through a hot tube to kill or extract any germs that it may contain. The apparatus shown is adapted for making small quantities of beer but the capacity may be varied quite easily.

2. Lear's Car Radio

Background: If you like to listen to music in your car, you can thank William Lear who, with his friend Elmer Wavering, co-invented the first car radio in 1930. Unable to afford a booth fee to show their product at an automotive trade show, Lear and Wavering parked outside the convention center, played their radio and took orders in the parking lot. Lear's company sold the radio device under the trademark Motorola -- combining "motor" and Victrola -- and it was an instant hit. But for Lear, that was only the beginning -- he went on to invent the eight-track tape format and navigation aids for aircraft. He later founded Lear, Inc. the supplier of the Lear jet.

A Provisional Patent Application for Radio Apparatus

I have invented a new radio receiver that is portable and can be used in automobiles and other similar vehicles. It can be operated by a remote control that can be located within easy reach of the operator.

In automobiles, considerable vibration and jerking occurs. In the usual radio there are variable condensers or capacitors. These are usually mounted so that their axis is horizontal during normal operation. Such condensers are particularly sensitive to the vibration and jerking, resulting in a change of adjustment.

I have determined that this can be eliminated by disposing the gang condenser so that its shaft is in a vertical position. This will enable practically all the jars and bumps to be taken up by the bearings of the condenser and eliminate or reduce any tendency to throw the condenser out of adjustment.

Also, the vertical position enables the remote control apparatus to be streamlined. Practically all of the remote controls used on such sets make use of a flexible cable, which must be connected to the condenser's shaft. The vertical mounting makes it possible to minimize the number of sharp bends and turns in this cable.

Also, when the radio is mounted in the vehicle, it must be protected from water, sand and other elements to which anything suspended underneath an automobile is exposed. To provide such protection, I provide a container, preferably metallic, for shielding purposes. I permanently fasten the container to the automobile, preferably hanging it from the bottom of the floorboards. I mount the radio as a unit on a chassis in this container. This makes it easy to replace the vacuum tubes and service the radio.

The set is energized from any suitable source of potential, usually the storage battery of the automobile and a separate battery for the plate supply of the radio's vacuum tubes. Various connections between these sources of potential and the set must be made through the radio's protecting casing. If an ordinary cable is passed through the casing, repeated removals of the set from its container will result in sufficient clearance between the cables and the container wall to admit water, sand or other undesirable elements. In order to avoid this, I preferably provide a detachable connection, one part permanently fastened to the casing and the other part permanently fastened to the chassis. This detachable connection may consist of any suitable plug and socket arrangement, having as many terminals as may be found desirable. With such a detachable connection, the complete chassis may be removed and replaced as often as desired, without endangering the protection afforded by the casing.

The drawing shows a radio set embodying the above concepts and mounted in an automobile.

Suspended underneath the automobile's floorboards, through a suitable aperture, is a metal casing 1. It contains the radio receiving set 2. This set includes the usual elements, such as rf transformers, vacuum tubes, tube sockets, and the like. It also includes a tuning element, a gang condenser 3. The gang condenser has a rotor 4, rigidly mounted on a shaft 5. The entire radio is mounted on a chassis 6 and can be removed as a unit from casing 1 upon the removal of cover 7.

The condenser is mounted so that its rotor shaft 5 is vertical when the set is installed in the automobile.

To operate condenser 3, a pulley 10 is rigidly fastened to the upper portion of its rotor shaft 5. Pulley 10 has a pin 11, to which is anchored one end of a coil spring 12. The other end of the coil spring is anchored to a fixed portion of the set, so that there will be a tendency for the condenser to assume a position of either minimum or maximum capacity. I have shown it in the maximum position.

Pulley 10 is also provided with an anchor block on its edge. One end of a cable 16 is anchored to the anchor block. This cable is positioned in a groove 17 in the periphery of pulley 10 and extends out through the side of casing 1. Cable 16 is in a sheath 17, and the entire assembly leads to a control unit 20, here mounted on the steering column of the car. The control unit has a control knob 21 for moving cable 16 lengthwise. By actuating knob 21, the driver may adjust rotor 4 in any desired position with respect to the fixed plates of condenser 3.

To energize the set, suitable connections are made to current supplies -- the automobile storage battery and a separate battery for the plates or anodes of the vacuum tubes.

A cable 25 leads to a combined volume control and switch 26 of control unit 20. From the control unit a pair of cables 27 and 28 lead to a socket 29, rigidly fastened in the bottom of casing 1. Socket 29 is tightly sealed in casing 1 so that no water or dirt can enter the casing. A cooperating plug 30 is mounted on chassis 6 so as to mate with socket member 29 when the chassis is in the normal position in the casing.

Various wires from plug 30 go to the several pieces of apparatus in the radio. When the radio chassis is removed from casing 1, plug 30 is automatically withdrawn from socket 29. Chassis 6 is rigidly mounted in casing 1 by suitable hardware (not shown).

If you're diligent and follow the instructions in this book, you will be able to file a provisional patent application within 24 hours. Of course, as singer James Brown might add, "Sayin' it and doin' it are such a different thing."

To see if someone could actually accomplish the filing within 24 hours, we asked an inventor to time himself as he went through the paces. Our inventor, an experienced toy designer, has licensed many toys in his 30-year career but had never prepared or filed a provisional or regular patent application. At the end of each chapter, we'll discuss any problems he encountered.

The Invention

The subject of our time trial is a method of simulating tears in a doll (we'll call Baby Tears) using LEDs (light emitting diodes). Our inventor is not claiming rights to any electrical or LED technology related to Baby Tears, only to the new use of the LED technology within a "crying" doll.

Initial Problems

The first issue for our inventor is whether to permit the publication of his invention in this book. Once published, it becomes "prior art" (see Section B4 of this chapter). Our inventor would then have one year to file a provisional patent application; otherwise all patent rights would be lost. In addition, if the book were published before the provisional patent application was filed, our inventor would lose the ability to file for foreign patents. (For more on foreign rights, see Chapter 6.)

Another issue is that once the invention is published, our inventor can no longer protect it as a trade secret. As a result, he can't claim the advantage of secrecy within the toy industry. Competing inventors and toy companies could read about the idea, possibly before it comes to market. (For more on trade secrecy, see Appendix B.)

Our inventor is willing to assume the loss of trade secret rights risk the loss of foreign patent rights and assume the obligations to file the provisional patent application within one year. (As we'll see, these prior-art risks became a nonissue as our inventor filed several months before this book was published.)

So far, our inventor spent 45 minutes reading this chapter and considering issues about trade secrecy and publication. Okay, there're only 23 hours and 15 minutes left!

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Table of Contents

1.The Provisional Patent Application
2. Deciding Whether to File a Provisional Application:
3. The Seven Hurdles
4. Finding Previous Inventions
The Provisional Patent Application:
Part 1—Drawing Your Invention
Drafting the Provisional Patent Application:
Part 2—Describing Your Invention
Filing and Beyond
Appendixes
A Provisional Patent Applications
B Agreements
C Glossaries
D The Inventor’s Notebook
E Attorneys
F Resources
Index

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