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THE
ONLINE INVENTOR –
(c)
2009 Market Launchers, Inc.
http://www.marketlaunchers.com
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Dear Inventor –
We all make our New Year’s
resolutions, and one of the things that I’m going to do differently this year
is that I’m going to bring in more guest contributors to our humble little
newsletter.
We start off the New Year
with Ron Reardon, a patent agent who is also President of the United Inventors
Association as well as past-president of the Inventors Club of Georgia. He
has some good stuff – well worth reading.
Now,
on with this week’s issue …
Best
Regards,
Paul Niemann
Paul Niemann
http://www.MarketLaunchers.com
800-337-5758
217-224-8194
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CLEVER QUOTE:
“Don’t worry about genius.
Don’t worry about being clever. Place your trust in hard work, perseverance
and determination.”… Sir Frederick Treves
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“Things You Should Know About
Provisionals,”
by Ron Reardon of Patents & More, Inc.
Like moths drawn to a flame,
many individual inventors are drawn to the low cost and less formality promised
by a provisional patent application. Inventor clubs, self-help books and
Patent-It-Yourself software fuel this flame by touting that a Patent
Attorney/Agent is not needed to get Patent Pending status and move your
invention into the market place.
Much has been said about the positive aspects of provisional applications:
Lower
filing fee
Patent Pending status for 1 year
Allows you to move ahead with
getting your invention into the marketplace
Does not have to be in a particular
format
Formal drawings not required
Fewer Patent Office forms required
Can effectively have 21 years of
patent term instead of 20
Keeps your foreign patent options
open
Is not published or examined by the
Patent Office
Individual inventors are naturally suspicious when Patent Attorneys/Agents warn
of the potential dangers of an inventor-crafted provisional application. Are
they telling the truth, or simply trying to line their pockets with the
Inventor’s hard-earned cash?
Since I am an inventor myself (7 patents pending), Secretary of the Inventor
Associates of Georgia, as well as a Registered Patent Agent with the U.S. Patent
& Trademark Office, I can see both sides of this issue. I have listed the
positive aspects above. Read on so you are properly armed to make the decision
that is best for your situation; whether it is to write your own provisional
application or to engage a patent practitioner.
1.
There is no such thing as a provisional patent.
You do not have patent rights until a non-provisional patent application issues
as a patent. Intellectual property rights are granted by the government, in this
case, by the Patent Office. When you get the notice of allowance, pay the issue
fee and receive your issued patent in the mail, then you have patent rights that
you can license. These rights are the right to prevent others from making,
selling, using or importing your invention.
2.
Remember to file a non-provisional application on or before one year
after the filing date of your provisional application and be able to claim the
filing date of the provision application.
You must properly file a non-provisional application claiming priority to the
provisional application on or before the one year anniversary of the filing date
of your provisional application. If the one year anniversary falls on a weekend
or Federal holiday, you must properly file on of before the next business day
after that date. If you get busy and forget about the one year time limit, you
may lose the right to get a patent.
Note: your filing date is the date that the Patent Office RECEIVES your
application, unless you use the U.S. Post Office Express Mail
Post-Office-To-Addressee option or the Electronic-Filing option, in which case
your filing date is the date sent.
3.
If you sold, offered to sell, publicly used or publicly disclosed your
invention BEFORE filing the provisional application you do not have one year to
file the non-provisional application.
You have one year from the earliest date of selling, offering to sell, public
use or public disclosure to properly file a non-provisional application, or you
lose the right to ever get a patent.
(continued after the break)
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4.
If your non-provisional application contains information that was not in
your provision application, claims directed towards that information will have
the filing date of the non-provisional application, not the filing date of the
provisional application.
The Patent Office will rightly consider these claims as new matter and will
search for prior art or other bars to patentability using the date of the later
filed non-provisional. Claims that are properly supported by provisional
application will be searched based on the filing date of the provisional
application.
5. Filing a provisional
without claims is allowed, but is risky.
Claims in the later filed non-provisional application MUST find support in the
provisional application, or will either be disallowed or not permitted to use
the filing date of the provisional application. Additionally, the best mode and
enablement requirements for the provisional application are exactly the same as
for the non-provisional. The examiner determines if the best mode and enablement
requirements are met by first examining the claims. If you have no claims in the
provisional, how will you know if these requirements were met?
6.
The provisional application must have sufficient detail that a person of
average skill in the art area of the invention could make and use the invention
without undue experimentation.
Just jotting down your concept and shipping your provisional application to the
Patent Office could bring heartache later. You must show that you have command
of your invention, whether it has actually been built or not. For example: Step
1: Insert bar of lead into container; Step 2: Do some chemistry stuff; Step 3:
Remove bar of gold from container. You will need to show further detail on Step
2 if you expect to pass the test on enablement.
7.
The provisional application should address the issue of non-obviousness.
The most common rejection from the Patent Office is that the invention is
obvious. The Examiner will cite Patent A, combined with Patent B, combined with
Patent C, and state that your invention is obvious in view of these patents. It
takes a professional prior art search, combined with a patentability opinion to
carefully craft the claims and the specification to avoid the prior art, and/or
to have a response than can overcome the objection of obviousness. Otherwise,
you may have a rude awakening down the road when your non-provisional
application is rejected and you say: If I had only known!
If you are going to file your own provisional application, pay attention to what
is listed above. No matter how hurried you are, put on your thinking cap and
imagine what will be claimed. A better approach is to draft actual claims and
then write a specification that fully supports those claims. I know that this
requires more effort, but to paraphrase a popular oil filter commercial of
yesteryear: You can pay now, or you can really pay later!
One final thought: Inventors' Digest's ninth commandment of Inventing says it
best: Do what you do well and hire pros to do the rest. When it is your
invention and your money, use your best judgment as to whether you have the
skill to draft your own provisional application or whether you should bite the
bullet and engage a patent professional
#
# #
Ron
Reardon is a patent agent and President of Patents & More, Inc. in
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