Provisional Patent Appli Ctions Next Steps

8/10/2019 Provisional Patent Appli Ctions Next Steps

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Now youve got a product

what next?

Next steps in IP


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What are options for your next step?

Commercialize it yourself

License IP to entity

Do nothing

Further research and development alone

Further research and development with entity


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Things you ownIdea and implemention for how to solve a problem

Know how for your product

Name for product

Logo designSlide presentations about product

Brochure/handouts about product


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Possible Kinds of IP protectionPatents and trade secrets

Idea and implemention for how to solve a problem

know how for your product

TrademarksName for product

Logo design

Copyrights

Logo design

Slide presentations about product

Brochure/handouts about product


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To obtain IP protection

PatentsFile patent application with U.S. Patent and Trademark

Office (USPTO) and get patent application granted.

Trade SecretKeep information secret with guidelines for preserving

secrecy.

TrademarksFile trademark application with USPTO and get application

granted.

Copyrights

Embody information in a tangible form (e.g., brochure,slides, book, video, music, logo).

Copyright registration also available.

IP protection is generally on a per-country basis


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Benefits of IP ownership

Exclude others from use of the IP

License use of the IP to others

Prevent importation of products that use the IP

Get damages (and sometimes attorneys fees) from

others that use the IP without a license


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Do you need a patent?

Alternatives

trade secrets

Good for things that can be kept secret for

longer than the typical life of a patent

(~17 yrs)

first to market, market maker with no patent

protection

Good for goods with a short lifespan (less

than the typical time to get a patent,currently about 3-5yrs) that are easy to copy


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Should you pursue a patent?

Considerations

How strong are the grounds for IP protection?

How easy is it to copy the IP?

What is the lifespan of the IP?

Who are your competitors?What is the time to market?

What is your budget for obtaining protection?

What is your budget for enforcing IP rights?

Ultimately, this is a business decision.


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U.S. Provisional Patent Application

What is it?A provisional application for a patent in the U.S.

BenefitsSatisfies statutory deadlines for filing a patent application in

the U.S. (e.g., one year from public disclosure)

Filing date establishes a date of invention

Fewer requirements than a nonprovisional patentapplication (e.g., no oath or claims needed)

Less expensive than a nonprovisional patent application

Allows one to mark a product patent pending

Preserves the option to file a nonprovisional patentapplication for a year (giving you time to further developthe idea and find investors, capital for the patentapplication process)


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What is it?A provisional application for a patent in the U.S.

BenefitsSatisfies statutory deadlines for filing a patent application in

the U.S. (e.g., one year from public disclosure)

Filing date establishes a date of invention

Fewer requirements than a nonprovisional patentapplication (e.g., no oath or claims needed)

Less expensive than a nonprovisional patent application

Allows one to mark a product patent pending

Preserves the option to file a nonprovisional patentapplication for a year (giving you time to further developthe idea and find investors, capital for the patentapplication process)


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Cautions

A provisional patent application (PPA) only

protects what is described within theapplication.

Should be very careful to describe idea fullyand broadly

PPA is not examined and will not lead to agranted patent.

PPA are not available for aspects that would becovered by a design patent.


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What if you don!t file a nonprovisional patentapplication within a year after filing the PPA?

If no statutory bars have passed (e.g., one yearafter public disclosure, offer for sale, etc.), youmay still file either a PPA or nonprovisionalpatent application.

If a statutory bar has passed, the subject mattersubject to the statutory bar becomes publicdomain (unless someone else seeks protectionfor it).

But, you can still file for patent protection foraspects of the design not subject to thestatutory bar.


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If you do not pursue a PPA

Try to get non-disclosures signed before talking tothird parties.


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If you want to pursue a PPA

Decide if you want to do most of the work yourself orpay a professional to help you.

What you can do to reduce costs:Do your own patent search

Become familiar with patents by reading themDraft written description for your idea/invention

Use templates linked from 2.009 patent resources

page

Prepare your own patent drawings

Export drawings from solidworksImport into powerpoint

Add lines and numbers


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Other things to think about

Learn about non-disclosure/disclosure agreementsand licensing arrangements

IANE Jan. 11, 2010 meeting, 7:00PM, 4-231

http://www.inventne.org

Get referrals to local attorneys and patent agentsUSPTO website

Go to IANE meeting


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What is the process for getting a patent?A simplified timeline

Day 1Invention Date

Within 1 year of Public UseFile Provisional Patent

Application

(Optional)

Or

File Patent Application

Within 18 months of Filing DatePatent Application Published

3 months laterPublic Use

Filing DateReceive e-filing receipt

Or

About Week LaterReceive paper filing receipt

A Few Weeks LaterNotice of Missing Parts

(if applicable)


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What is the process for getting a patent?A simplified timeline (continued)

Goal:

Within 14 months of Filing DateUSPTO Takes Action on Application

First Office Action

Goal:

Within 4 months of ResponseUSPTO Takes Action

Final Office Action

A few weeks laterUSPTO Processes Patent

Issue Notification

(Patent No. & Issue Date)

Goal: within 3 months from

Mailing Date of Office Action

(no later than 6 months)Respond to First Office Action

Goal: within 3 months from

Mailing Date of Office Action(no later than 6 months)

File a Response and

a Request for Continued Examination

(RCE)

Or

Start Appeal Process

Goal:

Within 4 months of ResponseUSPTO Takes Action

Notice of Allowance

Within 3 months from Mailing

Date of Notice of AllowancePay Issue Fee

Shortly Afterwards

Receive Letters Patent

Goal:

Within 3 yrs of Filing DateIssue Date

USPTO Issues Patent

Provisional Patent Appli Ctions Next Steps

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