Why Is a Provisional Patent Important for Your Invention?

A provisional patent application is a 12-month place-holder for a utility patent. The USPTO allows you to label your invention as Patent-Pending during this 12 month period. If a utility patent is not filed within the 12-month period, your spot in line is lost! Once the utility patent is filed, your utility patent filing claims the patent priority date as the provisional filing date. The patent priority date is the date from which you have a legal claim as the first inventor to have invented the subject matter of your patent application. As such, the patent priority date is an important factor for the examination process through which the utility patent undergoes.

The provisional patent application never gets examined for patentability, it only serves as a place holder for examination – however, the patent examiner will carefully scrutinize the content of the provisional patent application during the non-provisional patent application process. So it’s important to have your provisional patent application compliant with all applicable laws in order for it to preserve the patent-priority claim – otherwise, the Examiner can withdraw the patent priority claim and inventors are put in a bad spot, thinking they were patent-pending during the provisional patent process when in fact their patent pending status gets withdrawn upon the examination of the non-provisional utility patent application!

So, a provisional saves your spot in line for a utility patent. It is especially important in our first-to-file patent system. It is especially important as you market and as you share your invention/idea with engineers, developers, or those with deeper pockets than you! It always preserves your claim to the invention as those engineers/developers further improve on the invention.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, Georgia Institute of Technology, and Coca-Cola. 

yuri

 

Source: Smartup Legal

How Do I Add Details to My Invention After I Filed for a Patent?

I’ve added additional details to my invention/idea but I’ve already filed for patent. Can I modify my patent application after I’ve already filed it?

A very common question indeed. The break down is quite easy to understand when following this logic:

 

ADDING NEW SUBJECT MATTER

  1. Any Patent-Pending Application, whether it is Provisional or Non-Provisional, cannot be modified to include additional details (referred to as “New Subject Matter”) after its filing date.
  2. To add New Subject Matter to any pending application (referred to as the “priority application”), an additional patent application for the New Subject Matter must be filed before the priority application is granted or expires.  
  3. The additional patent application is known as a CIP Application.

CIP EXAMINATION

  1. The CIP Application, in its documentation, establishes a priority claim to the previously pending patent application to which the new subject matter relates.
  2. The CIP Application receives a separate patent examination from the priority application.
  3. During Examination, New Subject Matter receives a patent priority date even with the date of CIP filing while the Subject Matter Included in the Priority Application retains its earlier patent priority date.

CIP TIMING

  1. Therefore, the timing of the CIP filing is important.  It should occur as soon as the new subject matter is conceived and the value of the subject matter is confirmed for patent filing.
  2. The CIP Application can be filed as either provisional (informally) or non-provisional application. However, filing a CIP as a provisional is only recommended if its priority application is also a provisional AND the applicant is still not prepared to convert the provisional patent application to a non-provisional patent application.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

 

Source: Smartup Legal

What Does International Patent Protection Mean?

A question I get asked rather often – what does International Patent Protection mean? Then, after I recommend the filing of an international patent application (known as a PCT application, but will get to that later), my clients frequently ask: “wait, I have to file for an international patent application and it’s not even a patent recognized around the world?” Yep, that’s right.

There is no single “Patent” that is recognized around the world.  Rather, 148 countries (listed here: http://www.wipo.int/export/sites/www/pct/en/list_states.pdf) have entered into a Patent Cooperation Treaty (known as the PCT).  Under the PCT, each country must recognize a single international patent application (known the PCT application) and its patent priority date.

A PCT application may be filed up to 12 months after a national application has been filed in any one of the 148 countries that are members to the PCT.  This means within 12 months of filing either a US provisional patent application or non-provisional utility patent application, you may decide to step up and take your patent protection to the international level.

Prior to the PCT, if you were interested in international protection, you would have to file a patent application in each country all within 12 months of your national patent filing date under the Paris Convention for the Protection of Industrial Property (established back in 1883)!  This would be rather difficult and expensive experience.

With the PCT, a patent applicant need only file a single PCT application within that same 12 month period.  This single application is examined by a recognized international authority which issues a ‘patentability opinion’.  This patentability opinion, however, does not serve as a granted patent or a patent right. The Applicant has the opportunity to persuade the international authority of the patentability opinion if the opinion is not favorable.

In order to convert the patentability opinion to an actual patent, the PCT applicant may take the opinion and present it to any of the patent offices of the 148 countries that recognize the PCT applicant.  This must be done within 30 months of the applicant’s patent priority date (the date of the earliest national filing, if there was one).

If the patentability opinion issued by the international authority is favorable, the national patent office frequently adopts the opinion (subject to some local, national laws and exceptions) and grants a patent within its jurisdiction.  Even if the patentability opinion issued by the international authority wasn’t favorable, the applicant may still submit it to the national patent office and attempt to persuade the national patent examiner of the application’s patentability on the national level.

If you’ve understood my explanation correctly – you’ll see that there is no such thing as an international patent.  Rather, there is an internationally recognized patent examination process used to streamline the prosecution of patent rights when the patent applicant is seeking patent protection in many countries.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

 

Source: Smartup Legal

Why Is a Provisional Patent Important for Your Invention?

This post was originally published on this site

A provisional patent application is a 12-month place-holder for a utility patent. The USPTO allows you to label your invention as Patent-Pending during this 12 month period. If a utility patent is not filed within the 12-month period, your spot in line is lost! Once the utility patent is filed, your utility patent filing claims the patent priority date as the provisional filing date. The patent priority date is the date from which you have a legal claim as the first inventor to have invented the subject matter of your patent application. As such, the patent priority date is an important factor for the examination process through which the utility patent undergoes.

The provisional patent application never gets examined for patentability, it only serves as a place holder for examination – however, the patent examiner will carefully scrutinize the content of the provisional patent application during the non-provisional patent application process. So it’s important to have your provisional patent application compliant with all applicable laws in order for it to preserve the patent-priority claim – otherwise, the Examiner can withdraw the patent priority claim and inventors are put in a bad spot, thinking they were patent-pending during the provisional patent process when in fact their patent pending status gets withdrawn upon the examination of the non-provisional utility patent application!

So, a provisional saves your spot in line for a utility patent. It is especially important in our first-to-file patent system. It is especially important as you market and as you share your invention/idea with engineers, developers, or those with deeper pockets than you! It always preserves your claim to the invention as those engineers/developers further improve on the invention.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, Georgia Institute of Technology, and Coca-Cola. 

yuri

 

How Do I Add Details to My Invention After I Filed for a Patent?

This post was originally published on this site

I’ve added additional details to my invention/idea but I’ve already filed for patent. Can I modify my patent application after I’ve already filed it?

A very common question indeed. The break down is quite easy to understand when following this logic:

 

ADDING NEW SUBJECT MATTER

  1. Any Patent-Pending Application, whether it is Provisional or Non-Provisional, cannot be modified to include additional details (referred to as “New Subject Matter”) after its filing date.
  2. To add New Subject Matter to any pending application (referred to as the “priority application”), an additional patent application for the New Subject Matter must be filed before the priority application is granted or expires.  
  3. The additional patent application is known as a CIP Application.

CIP EXAMINATION

  1. The CIP Application, in its documentation, establishes a priority claim to the previously pending patent application to which the new subject matter relates.
  2. The CIP Application receives a separate patent examination from the priority application.
  3. During Examination, New Subject Matter receives a patent priority date even with the date of CIP filing while the Subject Matter Included in the Priority Application retains its earlier patent priority date.

CIP TIMING

  1. Therefore, the timing of the CIP filing is important.  It should occur as soon as the new subject matter is conceived and the value of the subject matter is confirmed for patent filing.
  2. The CIP Application can be filed as either provisional (informally) or non-provisional application. However, filing a CIP as a provisional is only recommended if its priority application is also a provisional AND the applicant is still not prepared to convert the provisional patent application to a non-provisional patent application.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

 

What Does International Patent Protection Mean?

This post was originally published on this site

A question I get asked rather often – what does International Patent Protection mean? Then, after I recommend the filing of an international patent application (known as a PCT application, but will get to that later), my clients frequently ask: “wait, I have to file for an international patent application and it’s not even a patent recognized around the world?” Yep, that’s right.

There is no single “Patent” that is recognized around the world.  Rather, 148 countries (listed here: http://www.wipo.int/export/sites/www/pct/en/list_states.pdf) have entered into a Patent Cooperation Treaty (known as the PCT).  Under the PCT, each country must recognize a single international patent application (known the PCT application) and its patent priority date.

A PCT application may be filed up to 12 months after a national application has been filed in any one of the 148 countries that are members to the PCT.  This means within 12 months of filing either a US provisional patent application or non-provisional utility patent application, you may decide to step up and take your patent protection to the international level.

Prior to the PCT, if you were interested in international protection, you would have to file a patent application in each country all within 12 months of your national patent filing date under the Paris Convention for the Protection of Industrial Property (established back in 1883)!  This would be rather difficult and expensive experience.

With the PCT, a patent applicant need only file a single PCT application within that same 12 month period.  This single application is examined by a recognized international authority which issues a ‘patentability opinion’.  This patentability opinion, however, does not serve as a granted patent or a patent right. The Applicant has the opportunity to persuade the international authority of the patentability opinion if the opinion is not favorable.

In order to convert the patentability opinion to an actual patent, the PCT applicant may take the opinion and present it to any of the patent offices of the 148 countries that recognize the PCT applicant.  This must be done within 30 months of the applicant’s patent priority date (the date of the earliest national filing, if there was one).

If the patentability opinion issued by the international authority is favorable, the national patent office frequently adopts the opinion (subject to some local, national laws and exceptions) and grants a patent within its jurisdiction.  Even if the patentability opinion issued by the international authority wasn’t favorable, the applicant may still submit it to the national patent office and attempt to persuade the national patent examiner of the application’s patentability on the national level.

If you’ve understood my explanation correctly – you’ll see that there is no such thing as an international patent.  Rather, there is an internationally recognized patent examination process used to streamline the prosecution of patent rights when the patent applicant is seeking patent protection in many countries.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri