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[DogDayPM 9er9er9er]

Thanks JimIvey - You post arrived while I was preparing this. Ye I can see that a crappy application may amount to little more than 'scaring power' to potential buyers who know little of IPP.

Robert KS, DogDayPM and Bartmans - If you are still following this, your thoughts most welcome!

I'll see if I can digest what I've missed and hit you back later tonight. 

Meanwhile, to combine some of what Jim and Blake have said, you can save some money (several hundred dollars, possibly to blake's point) by filing a high-quality US provisional application vs. making an immediate US utility application.  To Jim's point (and to my way of thinking, also) a provisional should be of the same quality as would be the utility application if at all possible.  Some people disagree with this position and believe that filing a more briefly written provisional application is of value.  Indeed, they will likely save an additional $2K-$3K in attorney time by accepting a "quickie" application.  Problem is, you have to later put more time (money) back into this brief application to make it ready for utility filing, so maybe you've not saved much...

More on the other stuff later.

[JimIvey]

When I draft and file a "less expensive" provisional application, it is not crappy. 

By "crappy" I meant an application unlikely to satisfy Section 112, first paragraph, for subsequent claims of appreciable value.  Note that Section 112, paragraph 1, is exactly the same for both provisional and real applications (including "best mode").  Also note that a provisional application is not in place of a real application but is in addition to a real application subsequently filed, so provisional applications add cost and do not reduce cost over all.

I see many practitioners file things as provisional applications that they would never file as a real application, yet the standards for sufficiency are the same.  At least with respect to substance (form can be forgiven in provisionals), I don't think you should file a provisional application that would not suffice as a real application.  However, as I've mentioned many times in here, sometimes a provisional application serves a marketing purpose rather than a legal one.

That aside, I understand that some practitioners defer a major portions of the fees for their services to clients for preparing and filing a provisional application (full and complete) and hope to charge such deferred fees upon filing the real application claiming the provisional's priority.  That's a business decision of the practitioner.  I don't do that.

Regards.

[blakesq]

Jim Ivey, You are right about saving money, and I explain to my clients that filing a provisional will not save money in the long run, if a non-provisional is filed.  However, money can be saved in the following scenario, client files a provisional in order to get 1 year to determine whether there is any interest in his invention, (and also protecting his international patent rights) by disclosing, marketing, and generally getting various people to know about his invention.  At the end of the year he determines that there is not enough interest in his invention to make it worthwhile to pursue, and thus he does not file a non-provisional.  Voila, he saves the cost of filing a non-provisional application, the cost of responding to office actions, issue and maintenance fees. 

When I draft and file a "less expensive" provisional application, it is not crappy. 

By "crappy" I meant an application unlikely to satisfy Section 112, first paragraph, for subsequent claims of appreciable value.  Note that Section 112, paragraph 1, is exactly the same for both provisional and real applications (including "best mode").  Also note that a provisional application is not in place of a real application but is in addition to a real application subsequently filed, so provisional applications add cost and do not reduce cost over all.

I see many practitioners file things as provisional applications that they would never file as a real application, yet the standards for sufficiency are the same.  At least with respect to substance (form can be forgiven in provisionals), I don't think you should file a provisional application that would not suffice as a real application.  However, as I've mentioned many times in here, sometimes a provisional application serves a marketing purpose rather than a legal one.

That aside, I understand that some practitioners defer a major portions of the fees for their services to clients for preparing and filing a provisional application (full and complete) and hope to charge such deferred fees upon filing the real application claiming the provisional's priority.  That's a business decision of the practitioner.  I don't do that.

Regards.

[JimIvey]

Jim Ivey, You are right about saving money, and I explain to my clients that filing a provisional will not save money in the long run, if a non-provisional is filed.  However, money can be saved in the following scenario, client files a provisional in order to get 1 year to determine whether there is any interest in his invention, (and also protecting his international patent rights) by disclosing, marketing, and generally getting various people to know about his invention.  At the end of the year he determines that there is not enough interest in his invention to make it worthwhile to pursue, and thus he does not file a non-provisional.  Voila, he saves the cost of filing a non-provisional application, the cost of responding to office actions, issue and maintenance fees. 

A provisional application does not provide foreign priority unless it satisfies Section 112, paragraph 1.  For me, that's probably 80% or more of my time in writing a patent application -- not great savings, but some I suppose.  I see practitioners charge 10% or less for filing a provisional application.  I don't see how such a provisional application can satisfy Section 112, paragraph 1, and therefore provide foreign priority.

For what it's worth, we've been 'round and 'round this issue many times in these forums.  All the "what about this scenario?" questions have been asked and answered.  The bottom line is that provisional applications were created for one purpose and one purpose only -- any time you use them for any other purpose (like some sort of "poor man's patent"), you're asking to get spanked by the law.

Regards.

[indust]

 Interesting............But hoping to politely steer the thread back to my marketing question a few posts back.  Given that a 'crappy" but affordable provisional patent application is of little benefit to IP savy serious buyers, Would'nt  my market research plan outlined
above help to justify borrowing the funds for legal assistance and a decent patent application.

Quoting myself "So would this work....... because my invention is a machine that makes very specific things, given that I do not want to manufacture these machines myself but rather to sell the design to an established manufacturer, I can present those 'things' as indirect 'proof' of the function of my invention to potential buyers without disclosing its design. (I suppose in a way a bit like the above example for the recipe for Cocacola),( I could present JPEG images etc with decriptions etc). I can target select manufacturers with this promotional material to check my belief that the invention will be very appealing and attract buyer interest. This feed back should also further confirm the novelty of this invention. Once serious senior interest from major manufacturers is established. I would then feel confident to pull out the stops and spend the money needed for PTC application etc engage legal asistance etc. Perhaps I would need to be careful what contact details I disclosed etc etc at that early stage. Perhaps I could use an indirect contact web site. I can see that I should not be tempted to go as far as disclosing the design as a trade secret with the sole cover of a non disclosure aggreement etc. probably patent application should come before that....?  Again ... "What I am proposing ( and keen to hear from you all is there is any downside) is that I contact potential manufacurers with tempting information on the product perhaps set up an indirect contact web site and email potential buyers notce with with hot links. If my invention enthusiasm is unfounded and I cannot get buyer interest. I stop there. If all is positive - I can i can justify the cost of legal assistance and serious PTC application etc.

[bartmans]

Indust,

I believe that you are well aware of the downsides of contacting potential manufacturers in an early stage (i.e. before you have filed for a patent application). The interest you can get by showing not the invention itself but derivatives (products?) from it would depend on the type of invention, the scientific field in which it resides, the economic value of the invention and the willingness of industrial partners in the filed to innovate. These factors are unknown to me, and could be best judged by yourself as expert in the field (but try to be objective).

Further - as non US resident - I should provide an additional comment to the proposals for first filing a US provisional application. For a New-Zealand inhabitant, I do not see any advantage of filing such an application. The main reason why I am advocating filing a PCT application in your case is:
a) you will still get an early US filing date (the PCT application counts as a US application); and most improtantly
b) you will get a novelty search and a first opinion on the patentability of your invention during the first year after filing.
This latter will not be provided by a US provisional filing and I suppose in your case it is of the utmost importance to be sure^* to have a patentable invention to continue the patenting process.

Also, as you may already have learnt from the responsesn in this thread, it is very important that your patent application is well drafted. This is something for which you will need help from an experienced patent attorney or patent agent. It is better now to spend some extra money to get things done in a correct way, then later be sorry. You got only one chance to do it right.

Success


^*Be aware that you can not be 100% sure, since the search can - by definition - not be 100% complete.

[indust]

Thanks Bartmans "I believe that you are well aware of the downsides of contacting potential manufacturers in an early stage (i.e. before you have filed for a patent application). "

Well I can only really see upsides. Even with a patent granted, exposing the design risks copying. if I can gain interest by showing its capability rather than its design surely it is safer. Of course I doubt I will be able to sell without exposing the design. But by with holding the design during the marketing stage until any selling stage I will have benefited by distilling down and only exposing the design to a couple of serious parties. I will then know where and how they operate and can better taylor the patent application to suit, and justify not skrimping on it.

I can't see how it can hurt to try - Or am I misssing something? I would most value any thoughts.

[blakesq]

Jim,

According to the PTO:  "Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date. "  http://www.uspto.gov/patents/resources/types/provapp.jsp

That is the service I provide to my clients who want a provisional, a lower cost, first patent filing in the USA.  Does that comport with the  "one purpose only" that you say Provisional Applications were created for?

As for me, preparing a patent specification that satisfies 112 is probably 40-60% of the time I spend.  The remainder is on crafting claims and getting the patent figures done in accordance with the patent rules.  And for provisionals, I usually do not prepare claims, nor do I spend a lot of time on the drawings, because I do not have to comply with the figure rules, I also do not spend a lot of time on coming up with alternative embodiments of the invention in a provisional, mainly because I am trying to keep my time and therefore cost on the provisional app low and within budget.   

Jim Ivey, You are right about saving money, and I explain to my clients that filing a provisional will not save money in the long run, if a non-provisional is filed.  However, money can be saved in the following scenario, client files a provisional in order to get 1 year to determine whether there is any interest in his invention, (and also protecting his international patent rights) by disclosing, marketing, and generally getting various people to know about his invention.  At the end of the year he determines that there is not enough interest in his invention to make it worthwhile to pursue, and thus he does not file a non-provisional.  Voila, he saves the cost of filing a non-provisional application, the cost of responding to office actions, issue and maintenance fees. 

A provisional application does not provide foreign priority unless it satisfies Section 112, paragraph 1.  For me, that's probably 80% or more of my time in writing a patent application -- not great savings, but some I suppose.  I see practitioners charge 10% or less for filing a provisional application.  I don't see how such a provisional application can satisfy Section 112, paragraph 1, and therefore provide foreign priority.

For what it's worth, we've been 'round and 'round this issue many times in these forums.  All the "what about this scenario?" questions have been asked and answered.  The bottom line is that provisional applications were created for one purpose and one purpose only -- any time you use them for any other purpose (like some sort of "poor man's patent"), you're asking to get spanked by the law.

Regards.

[ChrisWhewell]

Geetings to all. I am a total newbie to IP. I am a industrial designer and have finally (after 40 years of assisting other inventers) come up what with what is shaping up to be a very cool invention. I have had a prototype made and it works perfectly. Somehow this device must have slipped being invented all these years! I have been searching the web many times to try to find something similiar but so far nothing. Seems to me it works so well that if it has been previously invented it should be out there selling well. Anyway enough background hype.

This device would probably be best mass produced in a low cost facility probably in China. I am a designer - not a businessman, I think it best to try to sell the design to an existing manufacturer. I am not a risk taker by nature and neither can afford substancial international patenting or any attempt at inforcement of property rights due to an infringment in some foriegn land .

I worry that an affordable local patent would be a two edged sword. What strikes me is that by patenting, the very disclosure of the design of a new invention makes it available via the net etc to the whole world. The novely value is lost and the design can be copied or reverse engineered in some oblique location or way. Surely a disguised clone is more likely to appear if the device is patented than if it is sold as a 'trade secret' to a well resourced manufacturer who can better establish appropriate IPP.

On the other hand I can see that a potential buyer might gain some sense of security if the invention is marked and is 'patent pending' .

Can someone explain to me how a local patent can do more good than harm?
Any advice as to how best I might protect and present my invention for sale would be very welcome.

Just bite the bullet and file a PCT app.  Cover it well in the application, announce it to the world and hope that a lot of people recognize more value from possessing it than the items' cost. 

[indust]

Thank you for your gut feeling ChrisWhewell - do you also have rationale.....

[ChrisWhewell]

Thank you for your gut feeling ChrisWhewell - do you also have rationale.....

For clarity, are you asking me to rationalise with a New Zealander ?   Zeeland is Dutch, and I doubt the Dutch would have ever abandoned the place and never object formally to the Crown's having mis-spelled it repeatedly, if the people there were rationale, but admit I might be wrong !!!

Now that you either hate me or want to share a pair of ales and I hope for the latter, my rationale is that if one is serious, the cash outlay is a reflection of that.  If the idea doesn't clearly warrant spending PCT money, it's probably not worth pursuing and a vacation is instead warranted.  BTW, I love your islands and if you pay my airfare, I'll be happy to spend a few days discussing your proposed invention, and maybe even write up a patent spec for you while I'm there.  I have a good associate there I'd like to meet also.    You might want to look into filing a NZ provisional application.   If you elect to fly me there, the ticket doesn't necessarily need to be round-trip.  I could make a wager with my wife prior to departing, that I can sail my way back home, and earn a few extra quid on the side.

[indust]

Thanks Chris - My plan is taking shape. I have spoken at length with a NZ examiner and am beginning to understand. I register a full description of the design and function of the machine as a local provisional patent. According to NZ law I can then claim patent pending. That will help with marketing. If I can summon little interest, I  have saved my pennies. If I find enthusiastic co-operative buyer interest we do the NDA and if all goes positively move to PTC applications etc. If it turns to decline to proceed with agreement or un co-operative or I find worrying interest - but the machine still looks promising, I move to self funded PTC or relevent national patent application/s via cattle class tickets to you. Hopefully it will still be our summer.

[ChrisWhewell]

That's how I'd handle it too, it sounds like you're on the right track.  Commercializing also takes a little luck, so here goes ....... GOOD LUCK !!

Best,

Chris