04 Nov FALSE START – WHY THE RACE TO THE PATENT OFFICE HASN’T STARTED YET, AND WHAT YOU CAN DO TO GET IN THE RACE
On March 16, 2013, the United States became a “first-to-file” patent system, in which the first inventor to file a patent application, such as a provisional application, gets priority rights over others. The reasoning here is that if you want a patent for your invention, you better act on it quickly.
As a result, many patent attorneys and experts anticipated a flood of filed patent applications, resulting in a “race to the Patent Office”. However, according to a recent article entitled “The AIA’s First-to-File Transition SHOULD Have Resulted in More Provisional Filings (available at http://www.ipwatchdog.com/2016/09/14/the-aias-first-to-file-transition-should-have-resulted-in-more-provisional-filings/id=72617), the authors determined that, based on the filing of applications before and after March 16, 2013, the number of patent applications filed at the Patent Office did not substantially increase.
The authors conclude that provisional applications should be “filed first, filed often” in order to gain the highly-desirable priority rights. This strategy should be easy for companies like Apple, Inc. or Google, Inc., who have high revenue streams and can seemingly appear to file numerous patent applications. But what if you are a solo inventor, or work for a small company, and do not have the cash resources to “file first, file often”?
Tension often manifests with filing provisional patent applications. The balancing act between “how much detail should I add to the provisional application” and “I better get the provisional application filed ASAP” may often be daunting, because crucial details of your invention could be left out of the provisional application. As a result, your full application cannot claim the priority of your provisional filing date for features not described in your provisional application. Now you have left the door open for your competitors to possibly describe these features in their own provisional applications, to which they can claim priority.
Typically, a provisional patent application only requires one or more drawings and a short description. If you’re a small company worried about costs, you can file a sketch of your invention with a few descriptive words describing the components of your invention. For electrical and computer software inventions, a provisional application that includes a circuit diagram or a flow chart and a short write up may be sufficient. However, these types of provisional applications may not include all of the features of your invention, which would allow competitors to file an application that describes these missing details.
One strategy to protect your ideas, while minimizing costs, is to periodically file additional provisional applications for the same invention. Once you file a provisional application, you have one year to file a complete, non-provisional application. During that year, you can file multiple provisional applications, and then claim priority to all the provisional applications in your non-provisional application.
You could schedule filings for provisional applications every few months after your initial provisional application. If you submit your initial provisional application today with minimal details, you could file additional provisional applications in 3 month intervals, with each filing more definitive and refined. Thus, your non-provisional application would claim priority to three provisional applications. Of course, there is no magic to the three month interval, you could plan to systematically file provisional applications at any suitable time period.
If you’re a small company, “file first” may not be problematic, but “file often” may be cost-prohibitive. Systematically filing a series of provisional applications every few months to more fully describe your invention may reduce costs. This could ensure the submission of adequate details to support your non-provisional application when the time comes to file.
Ryan S. Jones is an attorney with Fay Sharpe LLP. If you have questions about patents and patent law, reach him at firstname.lastname@example.org or (216) 363-9190.