From the 'Lectric Law Library's Stacks
We don't give our criminals much punishment, but we sure give 'em plenty of publicity. ~Will Rogers
The Problem The Solution After You File a PPA Fringe Benefits of a PPA Inventors know that inventions are often new solutions to old problems. A new invention by Congress -- the Provisional Patent Application -- is a good example. It provides an excellent solution to a nettlesome issue for independent inventors: how to show their brainchild to potential manufacturers without getting ripped off.
The Problem Although most potential manufacturers can be trusted to play fair, few inventors wish to rely exclusively on trust when disclosing an invention. But for a variety of sensible reasons, most manufacturers are unwilling to sign binding non-disclosure agreements before even seeing an invention.
To resolve this standoff, inventors have traditionally used two approaches to protecting their invention when disclosing it to potential manufacturers.
Some build and test an invention before arranging a show-and-tell session with a potential manufacturer. If they have carefully documented the building and testing process, the manufacturer can't later claim to be the true inventor.
Or, an inventor may file a patent application and mark the invention with a "patent pending" label. Few manufacturers will risk ripping off an invention if they realize they may later be hit with a patent infringement lawsuit if the patent is ultimately issued.
Unfortunately, both of these approaches are increasingly flawed. As technologies become more complex -- biotechnology, nanotechnology and software development come to mind -- independent inventors find it harder to build and test inventions based on them. And filing a regular patent application is a lot of work and can be very expensive if an attorney is used.
The Solution Congress has just handed inventors a third approach: File a Provisional Patent Application (PPA) on the invention. Filing a PPA allows an inventor to claim patent pending status for the invention but involves only a small fraction of the work and cost of a regular patent application. All that is required to file a PPA is a $75 fee ($150 for large inventors) and:
a detailed description of the invention telling how to make and use it (the legal standards for the description are the same as those for a regular patent application informal drawing(s), if they are needed to understand how to make and use the invention a one-page cover sheet, and an appropriate small entity declaration (or declarations) if you are seeking "small entity" status. The detailed description of the invention can even be a technical paper you have written for a journal, if the paper discloses how to make and use the invention. This allows an inventor to freely publish an invention without fear of losing important patent rights.
Because the PPA is considered a legal substitute for building and testing the invention (called "actually reducing the invention to practice"), you don't need to file most of the parts of a regular patent application. For instance, you don't need to include:
a Patent Application Declaration (a statement under penalty of perjury that you are the true inventor and have disclosed all information you know that would be relevant to the examination of the application), or an Information Disclosure Statement (disclosure of all relevant prior art known to you). Also, claims play no role in the Provisional Patent Application, because your description of the invention will be considered only if and when the PPA is examined after you file a regular patent application.
After You File a PPA The Patent Office doesn't examine a PPA when it is filed. Patent examiners won't even look at it unless:
you file a regular patent application on the invention within one year of the PPA filing date, and you want to rely on the PPA filing date to prove that your invention came before other developments that would block your claim to invention (prior art) or a competing patent application claiming the same invention. Keep in mind that a PPA alone cannot result in a patent; you must still file a regular patent application. If you wish to claim the PPA's filing date, your regular patent application may not include any new matter (technical information) that wasn't in the PPA.
If you file a PPA so that you can claim patent pending status, and then fail to follow up with a regular patent application within a year, your PPA will be thrown away. You can still file a patent application later, but you won't be able to get any benefit from the earlier PPA filing date.
Fringe Benefits of a PPA In addition to an early filing date and the right to claim patent pending status for your invention, filing a PPA can provide two additional advantages.
First, the PPA filing date doesn't affect when the patent on the invention will expire. The expiration date is still 20 years from the date you file your regular patent application. So a PPA has the practical effect of delaying examination of your regular patent application and extending -- up to one year -- your patent's expiration date.
Second, you can file a regular patent application, convert it to a PPA one year later, and then file a second regular patent application based upon the PPA. That will extend your patent's expiration date for an additional year (two years later than if the PPA weren't used at all).
As with a regular U.S. application, if you want to pursue any foreign patent applications, you must do so within one year of your PPA's filing date if you want to obtain the benefit of that date.
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