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Do I Need to Perform a "Patentability Search” for My Invention?

Mon, 29 Apr 2024 18:31:55 GMT

There is no law or rule requiring an inventor to determine whether their invention is patentable before filing a patent application. In fact, filing a patent application and receiving an examination from a patent examiner at the US Patent and Trademark Office is the only sure way to find out if your invention is patentable. However, there are some limited situations in which it may be advisable to perform some amount of patentability search and analysis prior to making a decision to prepare and file a patent application.The body content of your post goes here. To edit this text, click on it and delete this default text and start typing your own or paste your own from a different source.

What Is a "Patentability" Search?
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A patentability search is a process of identifying publicly available information about the state of the art relevant to your invention as of the filing date of a patent application. Publicly available information, which is commonly referred to as "prior art", may be obtained from a broad range of sources. For example, prior art may include issued US patents, published US patent applications, issued patents and published applications from any country of the world, any document or page of a website accessible over the Internet, textbooks, journal articles, magazines, published research reports, and anything else that has been made widely available. In addition, prior art may include information about an inventor's own activities regarding the subject matter of the invention, such as a public use of the invention and an offer to sell a product or service that incorporates the invention. A prior art “reference” is any document containing information that was publicly available prior to the filing date of a given patent application.

As a practical matter, a patentability search is often limited in its scope. For example, it may be reasonable to limit a patentability search to a few select online databases. This approach may be the most cost-effective approach. However, the databases that are selected may vary based upon the subject matter of the invention. For example, since the United States is a major source of electronic device development and a major market for electronic device sales, US patent databases are a good place to search for a new electronic device invention. Accordingly, a patentability search for a new electronic device may be suitably limited to the patent

databases at the US Patent and Trademark Office and/or a Google Patents search, which includes more than just US patent documents. However, inventions related to, say, production of oil from tar sands are more commonly developed and used in Canada, such that a

patentability search for an invention related to tar sands should definitely include a search of the Canadian Patent Office database. But recognize that any limitation in the scope of the patentability search means that you may not identify some prior art that is relevant to the invention and potentially material to patentability of the invention.

Reasons to P erform a Patentability Search

While some companies may perform a patentability search as part of their normal procedure for determining whether to file a patent application on a particular invention, other companies may be just as intentional about avoiding any patentability search during the development of an invention and filing of a patent application. Either of these policies or procedures is perfectly fine. However, inventors, their patent counsel and anyone else involved in the prosecution of a patent application has a duty to disclose any information that a patent examiner might find to be material to patentability of a patent application directed to the invention. Accordingly, any information obtained because of a patentability search should be either submitted to the USPTO in an information disclosure statement (IDS) or at least evaluated for submission. If an inventor or other person involved in the prosecution is aware of material prior art, failure to submit that material prior art to the USPTO may leave any resulting patent subject to potential invalidation on the basis that the inventor or other involved person failed to live up to their duty of candor to the USPTO.

Reason 1: The Inventor Is New to The Subject Matter of The Invention

I sometimes recommend a patentability search in situations where the inventor does not have much experience in the field of the invention. In my patent prosecution practice, it frequently happens that an inventor has become frustrated with a problem that is a common experience among a large group of people. For example, many people have had the experience of driving a car behind another car that is applying their brakes. The illumination of brakes lights communicates the fact that the other driver is applying the brakes. However, brakes lights are either on or off and do not convey any information about how hard the brakes are being applied and how rapidly the car is decelerating.

Because this is a widespread common experience, there have been numerous attempts to design brake light systems to inform adjacent drivers about the rate of deceleration and, as a result, there is a lot of prior art dealing with these systems. So, I would typically suggest a patentability search for an inventor that has no formal experience working in the field of the invention. However, if the client was a microbiologist or an environmental engineer and the invention was the result of applying their technical expertise in this field, then I might not feel that a patentability search was particularly helpful.

Reason #2: The Inventor Needs Investment to Develop the Invention Into a Commercial Product

Even if the inventor has substantial experience and expertise in the field of the invention, a patentability search may be useful if the development of the invention into a commercial product or new business enterprise will require a significant investment of money. While some invented products may be produced in small quantities in the inventor’s garage with existing equipment, other invented products may require new facilities and expensive technology to even make the first batch of the invention. In the later situation, a rational investor may want to see evidence that there is a high probability of the invented product being patentable. The results of a patentability search may provide that evidence. For example, an individual that is experienced in performing patentability searches may essentially duplicate the same search process that a patent examiner will perform after a patent application is filed. A patent attorney may review the search results and apply the teachings of the prior art in the search results to the invented product in view of the patentability standards. A thorough patentability search report may document the findings and conclusions of this process so that an investor may understand the potentially patentable features of the invented product, if any. While the results of a patentability search and the conclusions of a patentability search report are not perfect and require several assumptions and qualifications, the insights provided by this research may assist an investor in determining whether to invest. After all, an issued patent provides the patent owner with the right to exclude others from making, using and selling the patented invention for a period of up to 20 years from the date of filing, subject to the timely payment of maintenance fees at three times during the life of the patent. This exclusivity can yield high returns on investment.

What to Do with The Results of A Patentability Search

As suggested above, the results of a patentability search may be used to convince an investor to invest in a company that owns the rights to the invention. However, patentability searches and patentability search reports are not perfect and there is always the possibility that material prior art is not located in the search or that the implications of certain prior art is not fully appreciated at the time the report is prepared. For these reasons and others, I view the patentability search as a better tool for ruling out patentability (a negative determination) than for supporting patentability (a positive determination). Accordingly, the primary objective of a patentability search and opinion may be to determine whether we can quickly rule out patentability. If a prior art reference disclosing the entire invention can be quickly identified, then the inventor can avoid the expense of preparing and filing a patent application. Accordingly, the investment in a patentability search may have a high return on investment.

Should an Inventor File a "Provisional" or "Nonprovisional" Patent Application?

Fri, 10 Feb 2023 19:31:54 GMT

Short Answer: It depends upon the developmental stage of the invention, your budget and/or whether you are approaching a critical filing deadline.

A provisional patent application (also referred to as a "provisional") and a nonprovisional patent application (also referred to as a "nonprovisional") are two different types of "utility" patent applications. This means that both of these types of patent application are intended to lead to legal protection of the new, useful and non-obvious "functional" aspects of an invention. By contrast, a "design" patent application may be used to obtain legal protection of the new, original and ornamental "appearance" of a product design. I'll discuss design patent applications in some other post, but you should know that design patent applications cannot be filed as a provisional. So, the entire topic of whether to file a provisional or nonprovisional is only relevant to utility patent applications filed in the United States Patent and Trademark Office.

There are some very important differences between a provisional patent application and a nonprovisional patent application. So, it is important to understand these differences before you can make an informed decision about which type of utility patent application you should be filing.

Nonprovisional Patent Applications

Nonprovisional utility patent applications are perhaps the more-common and well-known type of patent application. In fact, prior to changes in the patent statutes in 1995, this was the only type of utility patent application. However, when patent statutes created the "provisional" patent application in 1995, the common utility patent application was thereafter referred to as a "nonprovisional" patent application.

Upon filing a nonprovisional, the USPTO will assign an application serial number and filing date. The nonprovisional is then forwarded to a group of patent examiners (an "art group") that have expertise and experience with the subject matter of the patent application. An individual examiner will be given the responsibility to search for prior art that is material to the patentability of the subject matter being claimed in the nonprovisional. An "Office Action" is then provided to the inventor or applicant describing any objections and/or rejections of the claims. The inventor or applicant then has the opportunity to respond with remarks or claim amendments intended to overcome the objections and/or rejections. The full scope of patent prosecution is beyond the scope of this article, but it is possible for these events to result in the issuance of a patent.

Nonprovisional Patent Applications: Requirements

(1) A specification that contains a full and clear disclosure of the invention in the manner prescribed by 35 U.S.C. 112(a). Accordingly, the specification must include written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same. More specifically, the specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his/her invention must be set forth.

(2) Claims describing the scope of legal protection that you want the USPTO to grant to you. While not technically required at the time of filing, it is best practice to always file a nonprovisional with the 20 claims that are permitted for the basic filing fee. Any claims submitted after filing must be fully supported by the specification. When the claims are included at the time of filing the application, there will be no question that the claims are fully supported.

(3) Any drawings deemed necessary for the understanding of the subject matter sought to be patented.

(4) A signed Inventor's Declaration. An inventor's declaration includes a statement that the inventor believes themselves to be a true original inventor of the subject matter being claimed in the patent application and that they acknowledge any willful false statements are punishable under various federal statutes.

(5) Filing fees. Although filing fees can be paid within a short period after filing the nonprovisional, it is necessary to pay the basic filing fee, utility search fee and utility examination fee, as well as any excess claims fees for claims exceeding the standard 20 total claims (including up to 3 independent claims).

Provisional Patent Applications

The option to file a provisional was created by statute on June 8, 1995 for the purpose of providing inventors a lower-cost, first patent filing. The cost associated with filing a provisional is typically less than the cost of filing a nonprovisional because the provisional patent application filing fees payable to the United States Patent and Trademark Office (USPTO) are much lower and there are relaxed requirements for the content that must be included in a provisional application. The most significant reason for the lower cost of a provisional application is, or was intended to be, that the inventor did not need to hire a patent attorney due to the relaxed requirements. The intention behind the statute creating the provisional was that inventors would save money during the early stages of developing their inventions since they could prepare and file their own provisional. However, the specification and drawings of the provisional must still meet the disclosure requirements set out for a nonprovisional.

WARNING: I do not recommend that any inventor prepare and file their own patent application (even a provisional) unless they have had a significant amount of experience with patent prosecution or writing extensive technical documents.

Provisional Patent Applications: Pros (Benefits)

(1) Lower filing fees: The filing fee for a small entity to file a provisional is about $120 (as of January 2023) compared to about $725 to file a nonprovisional (as of January 2023).

(2) No claims are required.

(3) No Inventor's Declaration is required.

(4) No obligation to file an Information Disclosure Statement (IDS) identifying material prior art references known to the inventor

Provisional Patent Applications: Cons (Detriments)

(1) Expires automatically one year after filing.

(2) Never examined.

(3) Not eligible to ever be granted as an issued patent.

The Two-Step: First Provisional, Then Nonprovisional

After reading the above three "Cons" of filing a provisional, you may be wondering why anybody would ever file a provisional that is not eligible to become a patent and expires in only one year. The reason is that the filing of a provisional is only a first step in a two-step filing process.

In the first step, a provisional may be filed for the primary purpose of providing evidence of what was invented and establishing a filing date. The evidence of what was invented is important because it proves the scope of subject matter that the inventor has developed. The filing data is important because, for any patentable subject matter, the USPTO will award a patent to the first inventor to file their patent application. So, in the event that two inventors have separately invented the same subject matter, the first of the two inventors to file their patent application will receive a patent and the second of the two inventors will have their patent application rejected on the basis that the second inventor's invention was already known (i.e., is not new) in view of the first inventor's patent application having been filed first. So, there is a "race to the patent office" and inventors are encouraged to file patent applications as soon as the invention has been fully conceived or developed.

In the second step, a nonprovisional will be filed before the end of the one year life of the provisional AND the nonprovisional must include a "priority claim" to the provisional. The priority claim may be thought of as being an announcement of your intention to "link" the nonprovisional application to the previously-filed provisional application, such that the nonprovisional is given the benefit of an "earliest effective filing date" as of the filing date of the provisional. If the provisional and nonprovisional contain common subject matter, then the inventor gets the benefit of the earlier filing date of the provisional for the purpose of determining which inventor was the first to file a patent application for the invention.

The priority claim or "link" between the provisional and nonprovisional can be used to combine the advantages of the provisional (i.e., lower initial cost) with the advantages of the nonprovisional (i.e., examination and possible issuance of a patent). While this two-step (two-application) strategy may be used simply to delay the expenses of hiring a patent attorney to prepare and file the patent application, there are other reasons or situations to use this two-step strategy.

In a first example, assume that a situation arises where the inventor has fully conceived of the basic subject matter of the invention, but intends to further develop the subject matter into a commercially viable product within the next one year period. In this first situation, a provisional may be filed with a specification disclosing the basic subject matter known to the inventor at that time, such that an early filing date is established at the USPTO. Then, a nonprovisional may be filed within the next one year period with a specification disclosing both the basic subject matter as well as any further subject matter that the inventor develops during the one year period.

In a second example, assume that an inventor has been privately developing an invention into a commercially viable product or prototype. At some stage, they sign up to give a presentation about the product at a conference or begin building a website to make an initial launch the product to the public. Two days before the conference or the launch, the inventor begins to research patent law and discovers that the conference presentation or the website launch will be a first public disclosure of the invention. Since the inventor is interested in eventually filing a patent application outside the US where there is a requirement of absolute novelty (i.e., any public disclosure of the invention prior to filing causes rejection of the application), it is necessary to file a first patent application prior to any public disclosure of the invention. So, the inventor and/or a patent attorney have only two days to prepare and file a patent application in order to preserve the inventors right to file outside the US. In this situation, it may be best to quickly prepare and file a provisional application prior to the conference presentation or the website launch. A nonprovisional may then be prepared with more time available to consider appropriate claim scope and strategy.

Conclusion

A US patent can only be granted as a result of filing and prosecuting a nonprovisional patent application. If the invention has been completed, then filing a nonprovisional patent application is the most-direct choice. However, if the inventor or applicant is still developing the invention, cannot presently afford to hire a patent attorney, or must file immediately to establish a filing date, then a provisional patent application may be an appropriate first step in a two-step process that includes filing a nonprovisional patent application with a priority claim to the provisional patent application before the provisional patent application expires in one year.

How to Prepare an Invention Disclosure

Thu, 08 Sep 2022 18:31:54 GMT

It can be quite exciting to develop a new invention that you believe in and want to protect. But if you don't know how to protect your invention, this experience can also be daunting. So, you may want to engage a patent attorney that specializes in patent application preparation and prosecution. An experienced patent professional can help you avoid many potential pitfalls that can jeopardize your rights in the invention. However, before you set up an initial consultation with one or more patent attorney, you may be well-served to spend some time and effort preparing a high-quality Invention Disclosure.

What Is an "Invention Disclosure"?

An Invention Disclosure is a document that describes each and every aspect or feature of your invention. Your Invention Disclosure should be a complete statement about the invention that you want to protect. A patent attorney will use the invention disclosure as a basis for preparing a patent application. If the invention disclosure is comprehensive and complete, then the patent attorney can quickly understand the invention and focus their attention on how to structure the patent application to best protect your invention.

Why Is an Invention Disclosure important?

If an Invention Disclosure only describes a portion of the invention, omits important details, or is confusing to the patent attorney, then the quality of the resulting patent application may suffer. Alternatively, a poor invention disclosure may cause your patent attorney to spend additional time and effort seeking your input regarding missing details. In other words, a good invention disclosure will help to improve the quality of your patent application and may save you time and expense spent with your patent attorney.

What Should Be Included in The Invention Disclosure?

Your Invention Disclosure may be as unique as your invention. In other words, the distinctive features of your invention may drive the type and scope of content that is necessary to include in the Invention Disclosure. However, there are some categories of information that should be included in all Invention Disclosures. Such information categories include:

A short and informative Title - Your patent attorney may deal with many different technologies in a single day. A short title will indicate the general subject matter of the invention. A simple example of an informative title is "A Safety Shield for Attachment to an Electric Hedge Trimmer." This example title tells us that the invention is a shield that can be attached to an electric hedge trimmer for the purpose of improving safety of a person operating the hedge trimmer.
A statement of the problem addressed or solved - Describe the useful purpose or helpful result that is provided by the invention. Sometimes this information can be conveyed by first describing one or more problems with an existing device or method, and then describing how the invention overcomes these problems. This information will help your patent attorney understand the purpose of the invention and to provide the patent application with a clear statement about the utility (usefulness) of the invention.
A written description of the invention - The description of the invention should be a detailed statement of each component or step that is required for the invention to function. The patent application must contain a written description that teaches how to make and use the invention. If the invention is an apparatus (device), it is preferable to provide a name for each component and use specific terminology to described important characteristics or properties of each component. If the invention is a method or process, it is preferable to provide a list a steps, identify whether the order of steps is important, and how each step is performed. Ultimately, the written description must provide a sufficient amount of detail so that a person having an ordinary level of the skill in the relevant art or field will be able to make and use the invention without undue experimentation.
Drawings - The adage that "a picture is worth a thousand words" is especially true in an Invention Disclosure! If your invention is a physical product (also known as an apparatus or device), then a drawing or picture is very important. In fact, many inventions are difficult to understand unless there are several drawings of the device. For example, one drawing might show the overall device as it will be used, other drawings may illustrate each component, and yet other drawings may show how the components relate to each other and are used together to achieve a desired function. The relationship between components and their functionality should be clearly shown, but patent drawings typically do not require exact dimensions unless those dimensions are critical to the functioning of the device.
Dates of any public disclosure or commercial activity - It is best to hire a patent attorney to prepare and file your patent application BEFORE you make any public disclosures or being commercial activity (such as sales or offers to sell a product that includes the invention). However, if you have already made a public disclosure of the invention or have already begun selling a product or using a method that includes the invention that you want to protect, then make an immediate appointment with a patent attorney. A US patent application must be filed within one year of the first public disclosure, sale or offer to sell and your patent attorney will need some time to prepare and file your patent application before that one year deadline expires. This can mean the difference between receiving a valuable issued patent and having no patent rights at all.
Identify each of the Inventors - It is important to accurately identify who was involved in the inventive activity. Simply being a member of a product development team or having built one component of a new product does not necessarily mean that the person is an inventor. To be an inventor that should be identified on a patent application, the inventor must have contributed some inventive thought, idea or concept to invention. Even a person that manufactures a prototype of the invention is not an inventor if they were simply following the instructions given to them. Similarly, a person that had a general idea of a useful product or feature is not an inventor unless they contribute some means of accomplishing the product or feature. Seek assistance from your patent attorney in making a final determination of inventorship, but a list of potential inventors and a short statement of their individual contribution may be helpful. Note that each inventor may have independent rights in the invention unless there is some previous obligation to assign rights to a particular individual or business. Also note that your patent attorney will likely need each inventor's first/given name and last/family name, residential address, citizenship and contact information.
Don't delay - Assuming that your invention meets the requirements for patentability (i.e., utility, novelty and non-obviousness), US patent law now awards patents to the first inventor to file their patent application. In other words, it is a race between you and all others to be the first one to file a patent application for your invention. If another person independently invents the same invention and files even one day before you do, then the other person will be the one to receive a patent.

Do You Need to Make a Prototype of the Invention?

It is not necessary to make a prototype of an invention prior to filing a patent application. So long as the patent application is written to include enough detail that you clearly possessed the invention at the time of filing the patent application and disclose how to make and use the invention, then no actual prototype (no actual reduction to practice) is required. However, be aware that a general concept for an invention may not be enough to make your invention patentable. In my experience, valuable inventions often arise during the effort to implement an invention. Specifically, the inventor may encounter unforeseen difficulties implementing the invention, then discover a way to overcome those difficulties. The patentable invention is often the discovery of how to overcome difficulties implementing the invention rather than the general concept of the invention. This makes sense because it is these types of technical advances that the patent system is intended to reward.

What Is the Difference Between a "Patent Application" and A "Patent"?

Sat, 30 Jul 2022 18:31:53 GMT

Alternative Title: Don't embarrass yourself on Shark Tank by talking about your "provisional patent"!

Patent Application

A patent application is a document that has been filed at the United States Patent and Trademark Office (USPTO) and describes your invention. When a US patent application is filed at the USPTO, the USPTO will assign an application serial number and official filing date to the application. If the US patent application is filed using the USPTO's online filing system, either the Electronic Filing System (EFS-Web) or the new Patent Center, the application serial number and filing date are automatically generated within seconds after your patent application has been uploaded and submitted. At that very moment, the patent application is considered to be "pending" and the Applicant of the patent application may begin applying the term "Patent Pending" to products and services that are directed to the same subject matter as the patent application. The status of the patent application is "pending" until the patent application is either abandoned or becomes an issued patent.

Several days after filing a patent application, the USPTO will mail a Filing Receipt that confirms several details about the patent application that they received. In particular, the Filing Receipt will identify the inventors that were named at the time of filing, the identity of the Applicant (if different than the inventors), the title of the patent application, the serial number assigned to the patent application, the filing date when the patent application was received, and any correspondence address that is now associated with the patent application.

It is possible to identify a patent application by the format of the serial number. The serial number has the format of XX/###,###. The first two digits XX are the series code and the next six digits ###,### are the application number. For example, a patent application filed on March 17, 2022 was assigned application serial number 17/697,165. Patent application serial numbers are assigned in numerical order, so patent applications having lower serial numbers (including the series code) were filed before patent application having higher serial numbers.

On occasion it is important to remember that the physical offices of the USPTO are located in Alexandria, Virginia, which is in the Eastern Time Zone. Therefore, the filing date of a patent application that is filed online is determined from the viewpoint of the Eastern Time Zone. For example, if you submit a patent application online on December 31 of one year at 11:30 pm in the Central Time Zone, the patent application will be given a filing date of January 1 of the next year (i.e., the next day) because it was already January 1 on the East Coast when the patent application was submitted. Alternatively, you could file a patent application via Priority Mail Express® offered by the United States Postal Service at 11:30 pm on December 31 in the Central Time Zone and still receive a filing date of December 31 so long as the United States Postal Service marks your envelope with December 31 as the "date accepted" on the Priority Mail Express® label. This benefit is only available using Priority Mail Express® offered by the United States Postal Service (USPS) because the Patent Statute (at 35 USC 21) allows the Director of the USPTO to make rules governing the filing date and this is the rule that was established (37 CFR 1.6(a)(2) and 37 CFR 1.10) apparently on the basis that both the USPTO and the USPS are federal agencies.

Also note that US nonprovisional patent applications will be published 18 months after they the effective filing date, unless the Applicant requests nonpublication and meets some requirements. Anyway, you should be aware that a published patent application is not a patent! It may look similar to a patent, but it does not convey the right to stop others from practicing the claimed invention. Specifically, a published patent application will have a publication number with a format that is distinctly different from an issued patent (discussed below). A published patent application will have a publications with the format of US YYYY-####### A#. So, if you see a USPTO document that begins with a full year (i.e., 2008 or 2022) in the number, you know it is a published patent application and not a patent.

Patent

A patent application may or may not issue as a patent following a process of examination. There are numerous requirements that must be met before a US patent will be granted. A limited list of the patentability requirements includes a written description, an enabling disclosure, and claims directed to an invention that is new, useful and nonobvious to a person having an ordinary level of skill in the relevant art on the effective filing date of the associated patent application. Each of these requirements are worthy of separate articles and are matters of focus for patent attorneys throughout their careers.

A US patent will not issue without payment of an issue fee. Even if the invention that is disclosed and claimed in a patent application meets all of the patentability requirements, a patent will not issue until the issue fee has been paid. A US utility patent number will have a format of ##,###,###. For example, the USPTO issued US Patent 10,000,000 on June 19, 2019. By contrast, a US design patent will begin with the letter "D", a plant patent will begin with the letters "PP" and a reissue patent will begin with "RE." These patent number formats are described further at the following link: https://www.uspto.gov/patents/apply/applying-online/patent-number Furthermore, a patent number may include a "Kind Code" after the numerical portion. A "Kind Code" includes a letter, and often a number, to identify the kind of patent document and/or the level of publication. For example, the kind code "B1" indicates that the patent was published with no previously published pre-grant publication, whereas the kind code "B2" indicates that the patent was published with a previously published pre-grant publication. Therefore, if a US patent issues with a "B2" kind code, then there is a corresponding publication of the pending patent application. For assistance identifying the meaning of a particular USPTO Kind Code, use the following link: https://www.uspto.gov/learning-and-resources/support-centers/electronic-business-center/kind-codes-included-uspto-patent The matter can become rather complex since the meaning of some Kind Codes have changed over the years.

An issued US patent gives the owner of the patent the right to sue an infringer for damages and/or a court-ordered injunction against further infringement of the claims of a patent. An infringer is a person or company that "without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent" (35 U.S.C. 271(a)) or "actively induces infringement of a patent" (35 U.S.C. 271(b)). There are other specific actions and conduct that may be deemed infringement in a particular situation, so it is recommended to review 35 U.S.C. 271 or contact a patent attorney for further advice about infringement. A patent owner may also license their patent rights to others so that they (i.e., the licensee) may practice the patented invention with authority from the patent owner (i.e., the licensor) in exchange for a license fee. Typically, the licensor that receives all of the rights in a patent or even all of the rights to practice a particular aspect of a patent may be considered an "exclusive" licensee and may also have the right to use infringers or their exclusive rights.

So, What is Wrong with Saying "Provisional Patent"?

There is no such thing as a "provisional patent". An inventor may file a "provisional patent application", but that provisional patent application expires exactly one year after filing, will never be examined, and can never issue as a patent. You may then wonder what value there is in filing a provisional patent application. The simple answer is that filing a provisional patent application is evidence that you filed a particular patent application describing a particular invention on a particular filing date. In order to take advantage of a pending provisional patent application, a nonprovisional patent application must be filed with a priority claim to the provisional patent application before the provisional patent application expires on its one-year anniversary. A successful priority claim to the provisional patent application will give the nonprovisional patent application an "effective filing date" that is the filing date of the pending provisional patent application. The use of a provisional patent application can be useful if your invention is still being fully developed or if you are about to have a public disclosure of your invention.

So, please, don't refer to a "provisional patent." While people may understand that you are referring to a "provisional patent application", referring to a "provisional patent" is inaccurate and may give others the impression that you don't really understand the fundamentals of patent law. Using the appropriate terminology will gain you some credibility with many, including the "Sharks" on Shark Tank.