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[Ds IDEAS]

My brother and I have several great product ideas so many in fact its driving us crazy! we have the plans on how to create them but no money for prototypes, licenses, or patents. We are looking to find an investor to work with to develop one or two of our products. How do we get in front of the right people to go over the products and applications and, once we do, what's the best way to protect ourselves? Keep in mind that we don't want to sell the the products just the patents.

[Robert K S]

As a small entity you can file a provisional patent application online for $110.  (Even a broke inventor should be able to scrape together that kind of cash.)  If you have no money for an attorney and no investor, you can draft the application yourself, working from a book like Patent It Yourself to make sure your application fulfills the written description (enablement) requirement and all the other requirements of an application for patent.  You might be able to find this book from your local library, and there is lots of good free advice on these forums and in the MPEP, which is entirely online.  That provisional filing will start a one-year clock ticking.  During that year you can perform searches to further define the patentability of your invention over the prior art, and you can begin the search in earnest for outside investment.  Having a filing with the USPTO gives you the ability to hold your invention out as being "patent pending".  This will not completely eliminate the catch-22 of needing investment to secure a patent and needing a patent to attract investment, but it may ameliorate it a little bit.  You will have to file your nonprovisional application, and therein properly claim priority to your provisional application, if you want to maintain the priority date.  Once you secure financing, before you put any of it into prototypes or business plans, spend some on the assistance of an experienced patent practitioner (attorney or agent).  He or she will be able to help you avoid the pitfalls that so many pro se patent applicants fall victim to, resulting in the irreversible loss of their patent rights.

If you have come to this forum looking for investors, you're barking up the wrong tree.  Try to pitch your invention(s) to a meeting of your local angel investors' group after you have filed your provisional patent application.

[Ds IDEAS]

Thanks Robert, you have been a big help. I called a lawyer and he quoted me a lot more that 110.00 so yes i think we can handle that. thanks again. and no i did not come here looking for investors i came here for advice just like what you gave me. that being said, those who don't ask do not receive. 

[JimIvey]

Just note two things:

First, the $110 is just what must be paid to the Patent Office.  Somebody has to write the thing to comport with 35 USC Section 112, paragraph 1.  Either you do it yourself (note that most practitioners working in a firm are considered competent to sign their own applications until after about 3 years of experience, full time) or you can pay someone else to do it.  So, it's no surprise that hiring someone else to write that for you would cost more than $110.

Second, like I mentioned above, provisional applications must meet the same legal standard as a real patent application, so the cost to have someone write it for you ought to be the same regardless of whether the application is merely provisional or real.  If someone quotes you a substantially lower price for writing a provisional application than for writing a real application, I'd suggest you move on and look for another service provider.

Good luck.

[BobRoberts]

I would disagree with the underlined portion:
"provisional applications must meet the same legal standard as a real patent application, so the cost to have someone write it for you ought to be the same regardless of whether the application is merely provisional or real.  If someone quotes you a substantially lower price for writing a provisional application than for writing a real application, I'd suggest you move on and look for another service provider."

I agree that a provisional application must meets the legal requirements for a patent application to be relied on later.  Though a provisional can be drafted that would be essentially the same as a non-provisional application, one could draft a provisional application that meets the legal requirements of a patent application, but that costs less to prepare than a non-provisional application.  For example, a provisional could be drafted that provides an enabling written description with the best mode, but discloses few/no alternate embodiments of the invention.  The drawings can be very informal as well, so long as they adequately show the invention being sought.  The wording/manner of presenting a provisional need not be the same as a non-provisional, so long as non-limiting wording is used.  And, a very limited claims set could be filed (if at all).  I could forsee that these differences could result in a provisional being filed for 30 - 50 percent of the price of a non-provisional.  It really depends on the specifics.  Thus, I wouldn't shy from an attorney just because they charge a different rate for a provisional than a non-provisional application.

Of course, a client should always be made aware of what they are paying for, and what they are getting for their money.  Just my two cents...

[JimIvey]

Note that I said "substantially lower price."  Typically, all the formalities that you might discard in preparing a provisional application that comported with Section 112, paragraph 1 might be around 10-20% of the overall price.  Even that's dicey as you ought to know what claims you'd like to support in a year.

I've seen some quote a third or less of the amount to prepare a legally sufficient application.  I don't see how a provisional application can be legally adequate for that much less.

My unscientific estimate is that, as a percentage of a real application quote, 80% for a provisional is probably okay, 60-80% is a grey area, and below 60% is very worrisome.

Regards.

[Yak]

Ok, I have to admit that all of this adequacy of disclosure for provisional applications and the consequences of filing an inadequate enabling specification (with best mode) are beginning to confuse me a bit as a practitioner with only a few years under my belt. This has become a larger point of discussion at my firm due to the seeming increase in inventors using low cost alternatives for patent protection.  LegalZoom allows the inventor to prepare and file a provisional application for $199 (*plus filing fees); www.thoughtstopaper.com claims a licenses practitioner will prepare, or at least review (it is a little unclear), the provisional patent application material (which I presume is drafted by the inventor) for $149*; Michael Ries at www.patentmatch.net seems to do a similar thing for $99*; Daniel Swayze at www.patent-application.us will prepare a provisional application for $250*; Invention Home offers a provisional patent for $499*, although I cannot tell if they actually have any licensed practitioners working for them; and even Gene Quinn at www.ipwatchdog.com offers the Invent + Patent System software for $99* (although he charges $1500+* if he prepares the application); and the list just goes on and on.  Educating inventors as to the dangers of trying to get patent pending on the cheap appears to be a Sisyphean effort. 

I have a few scenarios that I hope someone can help me with, in an attempt for me to gain a better grasp on this topic.  I understand that a provisional application requires the same written disclosure, sufficiently clear and complete as to enable one skilled in the art to make and use the invention.  I guess maybe I am getting caught up in the nuance…?  I read many people, some practitioners included, who describe one benefit of a provisional applications includes the ability to test, market, and develop the invention over the provisional period.  Maybe the best way to ask my questions is to pose my scenarios:

#1) Provisional application is prepared and filed covering invention A+B+C rather generically.  In an attempt not to limit the provisional disclosure, the invention is described in terms of means plus function language; fastening means, support means, etc.  The structure and form is not fully textually described, although a preferred embodiment is illustrated.  Features and alternate embodiments are disclosed generically, occasionally in list form, as envisioned alternatives.  Although the core of the inventive concept is described, the disclosure is not detailed enough for a full claim set to be drafted.
   Utility application is filed claiming the benefit of this provisional.  The utility application also describes invention A+B+C, but now fully and clearly describes the features, components, and interactions in enough specificity to draft claims.  Most likely only the very broadest claims would have been supported by the content of the provisional.  Does invention A+B+C get the provisional filing invention date or the utility filing invention date?

#2) Provisional application is prepared and filed covering invention A+B+C.  The written disclosure fully enables features A, B, and C such that claims could be supported.  The disclosure also lists features D, E, F, G, H as envisioned features/alternate embodiments. However these features are not fully enabled.
   Utility application is filed claiming the benefit of this provisional.  Now features D, E, F, G, H are fully enabled to be supportable by claims.  Do features D, E, F, G, H get the provisional filing invention date or the utility filing invention date?

#3) Provisional application is prepared and filed covering invention A+B+C.  The written disclosure fully enables features A, B, and C such that claims could be supported.  During testing, marketing, and development features D and E are added to improve upon the invention but were not disclosed originally.
   Utility application is filed claiming the benefit of this provisional.  The utility application also describes invention A+B+C+D+E.  It seems to me that independently claimed invention A+B+C will get the provisional date and dependently claimed invention with features D+E will get the utility date.  If invention is only claimed independently as A+B+C+D+E, does this invention get the provisional filing invention date or the utility filing invention date? 

My apologies for the length of this post and for any fundamental ignorance which may be obvious when reading.  Thanks in advance for any comments. 

[JimIvey]

#1) Provisional application is prepared and filed covering invention A+B+C rather generically.  In an attempt not to limit the provisional disclosure, the invention is described in terms of means plus function language; fastening means, support means, etc.  The structure and form is not fully textually described, although a preferred embodiment is illustrated.  Features and alternate embodiments are disclosed generically, occasionally in list form, as envisioned alternatives.  Although the core of the inventive concept is described, the disclosure is not detailed enough for a full claim set to be drafted.
   Utility application is filed claiming the benefit of this provisional.  The utility application also describes invention A+B+C, but now fully and clearly describes the features, components, and interactions in enough specificity to draft claims.  Most likely only the very broadest claims would have been supported by the content of the provisional.  Does invention A+B+C get the provisional filing invention date or the utility filing invention date?

I'll apologize in advance if it seems like I'm splitting hairs.  Such is the nature of the law.

First, the quick answer.  My guess is "No."

I'm a bit confused by the description of how the provisional will be written.  "Covering" generally suggests claims as the claims are what determine what the application/patent covers.  In addition, "means plus function" language is claim language.  Why it would be in the specification is beyond me.

I suppose I'm confused a bit as to what "the disclosure is not detailed enough for a full claim set to be drafted" means.  Technically, you can write claims without any disclosure whatsoever.  The disclosure won't adequate support the claims, but I don't see how writing the disclosure is required to draft claims.  In fact, I believe most practitioners write the claims first (I don't, for what it's worth).

Assuming that the utility application is written so as to provide legally adequate support for the claims and that the provisional is significantly less, I'd say the odds are that the provisional was insufficient.

Here's a hint:

• What section specifies the adequacy of the disclosure in a real application?  35 USC S 112, first paragraph.
• What section specifies the adequacy of the disclosure in a provisional application?  35 USC S 112, first paragraph.

#2) Provisional application is prepared and filed covering invention A+B+C.  The written disclosure fully enables features A, B, and C such that claims could be supported.  The disclosure also lists features D, E, F, G, H as envisioned features/alternate embodiments. However these features are not fully enabled.
   Utility application is filed claiming the benefit of this provisional.  Now features D, E, F, G, H are fully enabled to be supportable by claims.  Do features D, E, F, G, H get the provisional filing invention date or the utility filing invention date?

Utility filing date.  Again, I'm a bit confused by the question.  Claims don't support anything in an application.  I assume you mean that "features D, E, F, G, H are fully enabled to be supportable by support claims drawn thereto."

#3) Provisional application is prepared and filed covering invention A+B+C.  The written disclosure fully enables features A, B, and C such that claims could be supported.  During testing, marketing, and development features D and E are added to improve upon the invention but were not disclosed originally.
   Utility application is filed claiming the benefit of this provisional.  The utility application also describes invention A+B+C+D+E.  It seems to me that independently claimed invention A+B+C will get the provisional date and dependently claimed invention with features D+E will get the utility date.  If invention is only claimed independently as A+B+C+D+E, does this invention get the provisional filing invention date or the utility filing invention date? 

Utility filing date.  For a claim to benefit from the filing date of a parent application, the entire claim must be supported by the parent application.

Regards.

[bartmans]

Also remember that a provisional application is not only used for the benefit of a US utility application, but it in many occasions also will serve as a priority document for foreign equivalent applications. Then a provisional application should also be written in such a way that a valid priority claim can be made in those foreign equivalent applications.
Especially under the European Patent Convention (and the case law developed thereto) verbatim disclosure in the priority document is needed to be sure that your priority is validly claimed. Of course this is a generalisation, but better be safe than sorry.

[JimIvey]

Especially under the European Patent Convention (and the case law developed thereto) verbatim disclosure in the priority document is needed to be sure that your priority is validly claimed. Of course this is a generalisation, but better be safe than sorry.

That's an interesting point.  I understand that sufficiency of disclosure in a foreign priority document is determined according to the legal standard of the foreign country in which the priority document was lodged (filed).

It sounds like you're saying that the EPO applies its own standards for what constitutes "new matter" in an amendment (on which they're very strict, as I understand) to determine whether a foreign priority document provides priority.  Under the Paris Convention as I understand it, the EPO should apply US standards for sufficiency of disclosure to a US provisional (or any) application in determining availability of the US filing date for priority.

Is my understanding of the Paris Convention mistaken?  What if the change to the specification is entirely unrelated to one or more of the claims?  Do the claims still lose the priority date?

Thanks.

[orangequant]

well, you guys are the pro's. but since i've got insomnia anyway here's my two cents on provisional apps, especially when done by an untrained inventor for mere purposes of lower cost and enabling use of a "patent pending" label... they suck, mightily. imo, even a badly drafted nonprovisional app (NPA) is preferable to a well-drafted PA. i say, bite the bullet, pay the $460 or whatever it is when you read this, and get on the road.
.
i used a couple PAs back when it was easy and cheap to do ($75). i didn't worry about the loss of its benefit after one year-- figured i could just forget it and file an NPA anytime. true, except for that OTHER pesky "one-year rule" about public disclosure, about which i knew nothing. (might wanna start a thread on that). well, that blew up about half my rights in my ultimate NPA. live and learn. and it ain't over yet- investing heavily in kevlar(tm) against first OA as we speak    and trying hard to improve my game to file my latest NPA... bottom line, i think too many newbie inventors get seduced by cheapness and "pat pend" allure into thinking they're covered when they might not be.
--------------------
edit~~~~ oh, you already have a thread on "one year rule"-- funny, it's years old

[bartmans]

Only when this thread was 'revived' I noticed that I omitted to reply to James' comments.

Is my understanding of the Paris Convention mistaken?  What if the change to the specification is entirely unrelated to one or more of the claims?  Do the claims still lose the priority date?

First of all, the EPO is not bound by the Paris Convention as not being a member State. It does have its own set of priority rules, which closely follow the Paris Convention.
Secondly, you should realize that for determining the validity of a priority claim the novelty test is applied: if a feature of the claim (or wording in the specification) is deemed to be novel (and I mean photographic novelty: it should be directly and unambiguously derivable) over the priority doc, then the claim fails.
Indeed it has to be considered claim by claim if the claimed subject matter is entitled to the priority date or the filing date. If subject matter is only present in the specification and not claimed, it will not influence the priority issue with respect to the claims. However, if your specification is a reservoir of narrowing features and you have to amend your claims to include such a narrowing feature, then - of course - validity of the priority claim starts playing a role again.

Regards

[JimIvey]

First of all, the EPO is not bound by the Paris Convention as not being a member State. It does have its own set of priority rules, which closely follow the Paris Convention.

Thanks for pointing out that subtlety that I hadn't known.

A couple of quick notes re provisional applications.  Cost:  $110 + the cost of a specification that comports with Section 112, paragraph 1 (for a simple invention, about $3,000) + ... in 1 year ... $460ish + cost to complete the application ($1,000ish or more to become reacquainted with the invention and draft claims).  For a real application, $460ish + probably $3,500 for the same application. 

So, over 12 months, the provisional costs about $4,570 and the real application costs about $3,960.

Ah, to be fair, let's look at provisional applications as most people do them.  $110 + $500-1,000.  In one year, $460ish + $3,500 (not much work was done before, so it's like starting over).

That provisional costs $4,570 over 12 months. 

Re the 1-year grace period.  Section 102(b) gives you that, not the provisional (unless it comports with Section 112, p 1).

Regards.

[dtpater]

My brother and I have several great product ideas so many in fact its driving us crazy! we have the plans on how to create them but no money for prototypes, licenses, or patents. We are looking to find an investor to work with to develop one or two of our products. How do we get in front of the right people to go over the products and applications and, once we do, what's the best way to protect ourselves? Keep in mind that we don't want to sell the the products just the patents.

Reading the other post's, everyone is making a big effort to help, the way I see it is proof of concept is what you need first and a tangible asset being the 3D Printed Prototype some thing very close to the final market finished product, (being the prototype final working Model), that is the valuable asset you need first to get the right level of interest for an Investor for Patents.

You can use 2D Hand drawn sell sheets also

 http://www.rogerbrown.net/help/