See more posts by this author: Kameron W. Kramer
The America Invents Act (AIA) went into effect in March 2013. Although it has only been 7 months, some of the effects are obvious.
The main thing I see is the filing of more provisional patent applications. AIA changed the US patent system from a first to invent system to a first to file system. This means that inventors can no longer claim priority to a date prior to the filing of a patent. Thus, it’s more important than ever to file a patent application sooner rather than later. This has the benefit in that it eliminates many costly lawsuits to determine who invented something first.
But it hurts those inventors who sit on inventions instead of filing for patent protection right away.
A provisional patent application is simply a placeholder. Once a provisional is filed, the inventor is protected for one year. At the end of the year, the inventor must either convert the application to a utility patent application or the provisional goes abandoned. A provisional can be ideal for small companies and individual inventors because they are cheaper and quicker to obtain when compared to utility patent applications.
Provisionals are not examined, but many people make the mistake of not providing enough information in the provisional simply because they do not think they have to. The requirements for what has to be included in a provisional are much more lax when compared to a utility patent application. Only a written description of the invention and any necessary drawings to understanding the invention are required for a provisional patent application. No claims are required in a provisional patent application. However, if not enough information is provided in the provisional, you can run into problems when converting to a utility patent. The utility can only claim priority back to the date of the provisional for only the parts of the invention that were described with enough specificity in the provisional. Otherwise, the priority date will be the date of the utility and not the provisional. It’s not hard to understand why that could be a problem. This is why it’s important to work with an experienced patent attorney when filing a provisional patent application. Saving a little money now by not speaking with an attorney can cost you a lot of money in the future.
Working with an experienced patent attorney can help you obtain patent protection protection quickly and relatively cheaply with a provisional. Once the provisional is filed, the invention is patent-pending. That means you can then start talking to investors and partners without having to worry about your invention not being protected.
With AIA, it is more important now than ever before to protect your invention as soon as possible.
Speak with an Albuquerque Business Law attorney about how a provisional patent can help you and your business.