“We are trying to achieve balance between privacy/trade secrets and patent protection. Specifically, we have an innovative product in process for which we wish to obtain at least five patents. However, we do not yet have a fully functional prototype and our software is in beta phase. Is there any way to retroactively get patent protection [via unopened, postmarked application packages] while not divulging information to the general public to prevent copy cats?” – Anonymous
I’m glad you’re seeking counsel on the issue. The answer you are looking for is known as provisional patent protection. The “sealed envelope” method, unfortunately, no longer works in view of our new patent laws (enacted in March of 2013).
A provisional patent application saves your spot in line at the patent office for a patent. Essentially, a provisional patent application tells the Patent Office “I’m working on this prototype, here is a disclosure of what it is, please save my spot in line for when I am ready to file a patent application.” In turn, the patent office will lock your provisional application up in a vault, not disclosing it to anyone, and grant you 1 year of “patent pending” status. Within that 1 year, you have to follow up with a full patent application. The full patent application will claim priority to the date you filed your provisional patent application. In this way, you are ‘retroactively’ claiming priority to the earlier provisional filing date.
Why it’s important
As you may be aware, the new patent laws have created a “first-to-file” system. This means that the first inventor to file a patent application on an invention wins the priority to any potential patent rights. Before this new “first-to-file” system, we had a “first-to-invent” system. Here, you could ‘seal your idea in an envelope’ and then submit it to the patent office as prove that you were the first one to conceive of the idea. Unfortunately, what matters most now is that you be the first one to file a patent application.
This is why I would encourage that you file provisional early, as soon as you have conceived of your idea. Then, within a year (and, hopefully, by then you’ve developed a prototype), come back with a full patent application on the idea.
Break your idea up into segments (if possible) and file each segment as a provisional patent applications. A full patent application (non-provisional) can claim priority to more than one provisional application. However, as soon as you claim priority to a provisional application, the provisional application becomes public record. Thus, if you want to keep different segments of your ideas from being disclosed, file them in separate provisional applications. That way, when you follow with a non-provisional, you can pick and choose which ideas are “ready” to become public record, and which ones can remain as provisional, undisclosed protected ideas. Otherwise, if you put every aspect of your ideas into a single provisional application, then the non-provisional that follows will make the entire idea available to the public, whether you are ready or not. By splitting ideas up into different provisional patent applications, you retain control on which provisional applications will get disclosed to the public.
Furthermore, when attempting to file multiple inventions in a single non-provisional application, the Patent Office will issue what is known as a restriction requirement – forcing the applicant to split the inventions up into different patent applications. This causes both delays in examinations and additional fees. This is why it is important to split the ideas up, and do so early.
Non-Disclosure Agreement (NDA)
Since provisional patent applications are never disclosed to the public, any disclosure you make to any third party about your idea must be made under a non-disclosure agreement. If you do make a public disclosure (or public offer for sale) of your idea, you have 1-year to file a patent application or else the idea is deemed to become of public record.
Retaining an attorney to perform this analysis is the first step in avoiding liability in the US.
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.
Source: Smartup Legal