John Radosta
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Hi everyone, this is my first post in this forum so I figured I’d make it a good one you all could benefit from. I have a product and prototype that I’ve been working on that has a provisional patent on it, but because some of the companies I wanted to talk to required a full non-provisional utility patent, I decided to go talk to a patent lawyer.
He broke it down like this: a patent has two parts, part A and part B. Part A is whats called the “specifications”, this is where you describe what your product is, how it works, who its for, etc. Part B is whats called “claims,” and really is the most important part. Claims are where you actually lay claim to what exactly is your property. He used an example of a chair for lower back pain with magnets in the seat, he said a claim might be “A relatively flat surface within magnets therein.” You want the claims to be general rather than specific because a “relatively flat surface with magnets therein” would give you protection over a competitor inventing a stool or even a mattress with magnets in it, rather than just against a chair.
So essentially a provisional patent is that you are just doing the Part A “specifications” and delaying the Part B “claims” for 12 months out while preserving your original filing date. The problem with this is that you have to make sure your Part A is going to be EXACTLY what you want it to be when it comes time to fully patent the product (drawings, measurements, etc.). This is because if you change your Part A upon filing for a full non-utility patent, a competitor who comes along during that 12-month period and files patent for a like product will have a strong case against you, saying that significant changes were made to your specifications and that your original provisional application thus does not apply to your full patent application, hence you lose your original filing date from your provisional.
I still think a provisional patent is worth it, especially for individual inventors, however its important to know their drawbacks. Be as specific as possible with your provisional applications and if you make a significant change to your design, file a new provisional to avoid any potential legal drama should your invention become a big hit in the future.
Good luck to all of you!
John
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Dave Korpi
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John:
Pretty good! take a look at the Provisional Patent Video Course that discusses the EXACT same things you mentioned.. In Video format. Check it out here.. provisionalpatentvideo.com/
Then for the top 10 reasons to file a provisional patent application watch the second video here..
filepatentapplications.com/blog/
Filing a new provisional if you make a change (what folks in the field refer to a “New Matter” is true for ANY patent.. I am always troubled why lawyers mention this as though a non provisional does not have the same problem. I think many are trying to trick folks into filing BEFORE they are truly ready. The Provisional Patent Application, to me is a cheap insurance and a proactive DEFENSIVE tool for your inventive idea… Will come in handy when you get Office Actions when you file your non-provisional!
A CRITICALLY important element in a provisional patent is the Enabling Disclosure where you explain to one skilled in the art EXACTLY how your inventive idea works and how to duplicate it. Great news is a Provisional Patent Application is not reviewed or made public…
Also Part A as you refer to does NOT have to be exactly. Not at all. talk to the USPTO. The BEST part of a Provisional patent application is you can describe MORE than one inventive idea without any hassles! You would just file more than one Non-Provisional patent application.
How in the heck to you become an insider anyway??
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Linda van Zuilekom
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Carol S
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Thanks Jim, my lawyer did mention changing the wording a bit to overcome one of the objections.
Frank, I emailed you back. Thanks
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Jim Hacsi
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Carol, there’s not much anyone can do or say to help you since you have an attorney representing you. What’s worse is your new attorney may have stepped into a situation that limits his/her options because you’re stuck with the specification as originally submitted. One thing I learned is if the claims that have been rejected are directed toward an apparatus that’s been deemed not to be unobvious in light of the prior art, then it may be a good strategy to write some new claims for a method or process of using or making the invention. Process and method claims are generally narrower in scope and may not protect the invention as well, but I’ve seen some pretty cleverly-written process claims. There are some very smart patent attorney members that chime in once and awhile on the forums, so maybe they’ll help. At this point, you’re being represented by an attorney and most professionals will shy away from giving any legal advice for obvious reasons.
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Frank White
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Carol S
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I’ve got an new attorney. It’s been a complicated journey….the application was originally done by a lawyer for the company I Iicensed it to in 2007. They backed out and released me from the licensing agreement and I now have a new local attorney helping me to respond to the second office action. I’m just trying to save some time and expense by doing some of this research myself.
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Jim Hacsi
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Are you prosecuting the application yourself or do you have an attorney involved?
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Carol S
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I’ve spent the last few days trying to figure out how to get around/respond to three patents cited against my patent application. The first one was easy to counter based on its claims, but now I feel like I’ve hit a wall and don’t even know what I’m looking for anymore.
Any advice????
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Anthony Costa
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Yes, :) you are so right claims are very important and should be broad as possible.
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Jane J.
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Good info, well presented. Thanks John! this clarified some things for me…
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