AVOIDING COMMON PITFALLS OF PROVISIONAL PATENT APPLICATIONS (PPA’S)
Copyright 2013 Joseph R. Birkner, M.E. Registered Patent Agent
Provisional patent applications are frequently touted by various invention marketers and patent agent/attorney “Wanna-Bees” who are not registered to practice patent law. Such persons realize that they can’t legally practice patent law and generally hawk alternative routes for inventions. Typically, they “poo-poo” patents and steer unsuspecting inventors directly into marketing services. Inventors who are always afraid that someone will steal their great idea are reluctant to work with invention marketers based on confidentiality and trust issues. Although the track record of many invention marketers is a cause for concern, if the inventor has a PPA, the inventor is more likely to work with an invention marketer. Realizing this to be the case, the invention marketers suggest to the inventor to write their own PPA and save the cost of hiring a patent agent to write it. Not skilled in patent law, or having poor writing and drawing skills, the inventor may prepare a PPA incompletely and incorrectly thereby resulting in loss of future patent rights or being barred from ever filing for a patent on the same invention later. Despite this reality, the inventor now has a PPA and feels more confident in working with an invention marketer.
What’s a PPA?
It is an application that does not initially get examined but is a place holder for your date of invention onto which you can claim domestic priority later IF it is properly prepared. Your date may be important especially if you have sold or offered for sale, your invention less than but approaching one year, afterwhich you will be barred to file any patent application on that invention.
A PPA must be prepared correctly to be of any worth. A Non-PPA, including any and all foreign patent applications, must be filed within one year (12 months) of filing the PPA. The cost now is more than it would be if a Non-PPA was filed without the cost to properly file a PPA. If your filing date is not an issue, you may not need to file a PPA. If, on the other hand, you showed your invention or sold it for nearing the one year date, there may not be sufficient time to properly prepare and file a Non-PPA so a PPA is the proper path to follow to preserve your patent rights. Shortly after filing the PPA, in this example, a Non-PPA should be prepared and filed. It is also pointed out that effective March 16, 2013, the US is going to a first to file system as specified by the America Invent Act. What this means is that the first person to file a patent application could be awarded a patent, so speed in filing is important now to prevent anyone else in the world from beating you to it.
The PPA must disclose the elements of the invention and their relationship. If you disclosed a mouse trap in the PPA, you can not disclose a radar speed trap or a bear trap in the Non-PPA to rely on the benefit of your PPA filing date. Most inventors don’t realize this and find, unfortunately, later that their Non-PPA is invalid.
A PPA is not a patent. Some novice inventors, mistakenly say they have a patent, or say a provisional patent, which is false. It is a provisional patent application, nothing more.
Some inventors, are incorrectly led to believe that they can inexpensively prepare their own PPA and later have a patent agent write a Non-PPA based on their work. Theoretically, this could be true, but, after reviewing many inventor prepared and even legal firms advertising on TV, I have found several PPA’s that could not be relied upon in preparing a Non-PPA thereby resulting in loss of patent rights and protection. A properly prepared PPA takes considerable time and effort always keeping in mind that the Non-PPA mirrors the PPA. A patent agent knows what should be included and what should not be included.
Contact Joseph R. Birkner, M.E. Registered Patent Agent firstname.lastname@example.org for Answers to your Questions about PPA’s. and for advice about PPA’s and other patent matters.
EXAMPLE 1. PPA is filed without properly disclosing what the invention is and how it works.
Elements of the invention are merely listed without explaining their relationship to one another; ie. A parts list is essentially filed.
RESULT: A Non-PPA filed within 1 year is invalid because the PPA fails to meet 35 USC 112 First and 2nd paragraphs; it is non-enabling because it fails to tell a person how to make and use the invention. Only an aggregate of parts is disclosed.
EXAMPLE 2. A PPA fails to contain elements of the invention that the inventor adds in the Non-PPA.
RESULT: A Non-PPA filed within 1 year is invalid because the PPA fails to contain elements of the invention that the inventor added. As above, a mouse trap is not a radar trap or a bear trap.
EXAMPLE 3. You sell your invention and you file a PPA within 1 year of your date of first sale or offer for sale. Your sale date is January 16, 2010; you file a PPA on January 16, 2011. You follow up with a Non-PPA on January 8, 2012 You manufacture your invention with additional and different parts. You sell the invention with the added parts. Your patent issues on March 1, 2013. On March 15, 2013 you discover that a competitor is making and selling your invention. You notify them that they are infringing your invention and sue them.
RESULT: Competitor examines PPA and compares it to the Non-PPA and discovers that they are different. Your Non-PPA can not claim the benefit of a priority date of the filed PPA and since you sold your invention greater than 1 year, in this example, and the PPA being faulty, you lose the law suit, the competitor can make and sell your invention without paying any royalties and you are forever barred from patenting your invention.
This example is based on a real case (dates herein are for illustrative purposes only and clarity). The PPA and Non-PPA were both prepared by a large Patent Law Firm who should have known better, or did not understand the implications or plain incompetency. Perhaps an inexperienced patent practioner was given the job to prepare the patent applications and they failed to see the potential problem.
MORAL OF THE STORY: PPA’s are not as easy to prepare and file even for some professionals. If professionals can’t do them properly in this case, imagine what your chances of doing it right are!!
You are an inventor. Do what you do best and invent. Leave the patent work to an experienced patent agent.
CONTACT: Patent Law Offices
Joseph R. Birkner, M.E.
Registered Patent Agent
4 Earley Road, Peabody MA 01960-1218