Win the race to the patent office while getting the full benefit of your priority date

By Ryan Jones, attorney, Fay Sharpe LLPRyan Jones_01

It’s just happened for you. That moment of inspiration. You’ve just come up with a brilliant idea, and now you want to get patent protection for it.

Current U.S. patent law allows you to file a provisional (aka “temporary”) application with the U.S. Patent Office that describes the basics of your invention. You then have one year from that filing date to refine the idea and file a full patent application while claiming the priority date of the provisional application. Provisional applications work similarly to line stamps at an amusement park. You get a stamp to stand in line for a ride at a certain time (such as noon), then at your stamped time, you get to cut in front of everyone in line with a time stamp that is later than yours. Similarly, your provisional patent application allows you to cut in front of your competitors who have developed similar inventions.

Under the previous “first to invent” system, if you could prove that you were the first to invent, you had priority rights over other people or companies (your competitors) who developed similar inventions. Generally, you could prove that you were the first to invent by documents such as dated technical journals or drawings. Thus, you could take your time to develop your invention before filing a provisional application describing the invention.

Now, after the passage of the America Invents Act in 2013, the Patent Office operates under a “first to file” system — that is, whoever files a patent application with the patent office first gets priority over others. The reasoning is that if you want a patent for your invention, you’d better act on it quickly. In other words, you snooze, you lose.

As a result, filing a provisional application is often called the “race to the patent office” in order to obtain an earlier priority date than your competitors. The primary concern is that the details of your full application must be supported by your provisional application to get the benefit of the date of filing of your provisional application. The balancing act between “How much detail should I add to the provisional application?” and “I’d better get the provisional application filed ASAP” is often 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 any missing features, leaving the door open for your competitors to get the priority of your missing features for their similar inventions.

You may be asking, “What’s the quickest way to get a provisional application on file with the patent office, while fully describing my invention?” As is often the case, a picture is worth a thousand words. As an example, for mechanical inventions, a provisional application that includes some pictures and a short write-up describing those pictures is usually sufficient to fully describe your invention. In other examples, such as electrical or computer inventions, a provisional application that includes a circuit diagram or a flow chart and a short write-up describing these pictures is usually sufficient to fully describe your invention.

Sometimes, the pictures in your provisional application make all the difference. For example, if you were the guy in the movie Office Space who invented the “Jump to Conclusions” mat, you may want to file a provisional application for your mat that includes a picture of the mat and a short written description. However, in your quest to win the race to the patent office, you may forget to mention in your write-up that the mat has different conclusions written on it that you could jump to. But because the picture shows that your mat has different written conclusions, your full application would be supported when filed the next year for mats with different written conclusions.

As a bonus, there are very few formal requirements for provisional applications. Basically, all you need to file a provisional application is a short description, a few figures, a cover sheet and, of course, a filing fee. Theoretically, you could sketch your invention on a cocktail napkin with a crayon and write a few words on it, and that would be enough for a fully supported provisional application (although this approach is not normally recommended).

To summarize, the quickest, most effective way to win the race to the patent office, while full describing your invention, is to file a provisional application for your invention that includes a few pictures (or a circuit diagram, or a flow chart) and a short write-up. This way, your invention is fully described, and you can get priority over your competitors for the invention.

But don’t try to invent the “Jump to Conclusions” mat. That’s already been done.

Ryan S. Jones is an attorney with Fay Sharpe LLP. If you have questions about patents and patent law, reach him at ryan.jones@faysharpe.com or (216) 363-9190.