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[mdm]

Thanks a lot for all of you taking the time to weigh in on my “am I crazy“ question.  Of course your comments raised some other questions.

Mr. Ivey  warned against a provisional patent.  Can you expand on this? I was under the impression that this would be a good way to get indisputable documentation of the basics of my idea and allow me to talk to potential licensee with at least some degree of protection and claim patent pending (for whatever that may be worth).  This seems even more important with all of the warnings provided by contributors that I need to assure commercial viability before investing  in a patent.  In fact, for my most promising idea, I have already submitted my 20 page draft patent (without claims per Pressman’s guidance) as a provisional patent.  

The first idea I am pursuing is a significant yet simple improvement to a very popular item with many competing major brands.  One of the manufactures offered what appeared to be a reasonably fair confidential / non-disclosure / secrecy agreement that promised to review the idea in confidence for the limited purpose of evaluating further action.  They provided reasonable protection clauses for themselves for things such as s against ideas they may have already under development or ideas already in the public domain.  This agreement seemed to provide me with some negotiating rights for the idea even if a patent is not issued.   All other manufacture disclosure agreements refused to provide non-disclosure and forced me to limit my  rights to those provided by any ensuing patent.   I have sent the info only to the manufacturer that promised non-disclosure a week ago.  

Assuming they like the idea, I am thinking that if I do not disclose to other companies, I can negotiate to give  them sole disclosure of the idea for their use - before the patent is filed or acted upon.    It seems to be the only option that would provide any possible reward if I do not get a patent (or a valuable patent).    Obviously any such agreement pending patent action would need to have provisions for either eventual patent actions.

Obviously I am guessing what might or could happen and I am moving even further into legal areas where I am even more ignorant than my previous “can I patent this myself” questions.   I am naively hoping that the manufacturer will act fairly (what are the chances?) but I cant count on that.  

Anyway, if they express serious interest, I expect that it is time to get some legal assistance.  Hope I havent screwed things up too badly already.

Based upon the input from your forum I have put more emphasis in finding some professional help.   The local small business technology development center has recommended  a couple of lawyers that I intent to contact.  
Anyway THANKS  for your advice.
 

[JimIvey]

Dear MDM,

First, congratulations on finding a manufacturer who seems willing to take you seriously.  It's not unusual for companies to refuse to consider NDAs.  But you see the advantage in considering them -- the company gets a "first look" at someone else's new technology.  Good luck with them!

Second, regarding provisional applications, I have a FAQ on the topic:
http://www.iveylaw.com/index.php?option=faq&task=viewfaq&artid=4&Itemid=

Remember, in my last post how you had to enable the *future claims*?  A provisional applicaiton is typically filed without claims and in a hurry.  How can you possibly support claims you haven't even considered?  

Here's a brief summary of how I write an application (different from most).  I start with the background and then the figures.  Then the detailed description (modifying the figures as I go along).  Then the claims (now, with an intimate familiarity with the invention, it's inner workings, alternatives, and value).

Well over 90% of the time, writing the claims forces me to think of some terminology I hadn't considered when writing the specification.  So, I go back to the specification and work that language in.  If I'm doing this based on a previously filed provisional application, my hands are tied and I can't change language without losing the earlier filing date.

Let's look at it from the other side.  Imagine you're my client and someone asserted a patent against you.  Imagine that you have the resources to litigate if necessary.

I'll take a look at the patent and order copies of all the application files associated with it.  If I see a provisional application, red flags go up.  I'll compare the provisional application to the non-provisional application.  If they're nearly identical, it looks like they knew what they were doing.  On the other hand, if the applications are significantly different, I believe there's a substantial likelihood that the provisional application was filed in a hurry and probably doesn't meet the requirements of law.  I would tell you that the patent is ripe for challenge (i.e., likely has significant enforceability problems).  At the very least, we can make the patent holder spend lots of money explaining away the differences between the applications to a judge and jury.  Perhaps (depending on the specific circumstances), your licensing "threshold" -- how high you'll go before resorting to courts to sort it out -- is significantly reduced.  

One little twist here....  If I see foreign applications claiming priority on the provisional application, it's likely that the provisional was filed to preserve foreign rights and not U.S. rights.  The U.S. application might not be so damaged.

The bottom line is this:  your first filing is the foundation of your intellectual property fortress.  Do you want to throw it together yourself with some old plywood and rusty nails you found?  Or do you want it done right and strong so that you can build a substantial structure around and on it?

Having filed your own provisional isn't fatal.  There's a substantial likelihood that you can build a good foundation over that or next to it or whatever.

Lastly, the notion that a provisional patent application "protects" you sounds wrong to me.  It might provide some protection, but not in the way most people think.  For example, there's a myth of the "poor man's patent" of mailing your disclosure to yourself.  This, and much of the reasoning behind provisional application thinking by pro se (for self) applicants, seems to be based on the false notion that, if you think of it first and can prove it, you win.  That's just flat wrong.  It's true that the U.S. is a first-to-invent jurisdiction rather than first-to-file, but that first-to-invent has to lead *directly* to a patent application.  And, if you think you'll care about protection outside the U.S., you'd better treat the U.S. as first-to-file.

Really lastly, going back to the fortress foundation notion, it's true that it takes resources (generally money, but time and work can sometimes be substituted for money).  Mr. Auslander's frequent admonition that not every invention is worth a patent application is appropriate here.  And, I suppose the cheap, partial effort of a provisional application might make the most sense for inventions of questionable value.  However, whether a particular invention is worth the proper approach is a business decision, not a legal one.  So I can't offer much help there (aside from laying out the costs to weigh against the benefits).

Caveat:  You should be aware that my views on provisoinal applications are minority views.  Many practitioners disagree with me.  Although, the percentage of practitioners disagreeing with me seems to be shrinking over time.

I hope that clarifies.  

[M. Arthur Auslander]

Dear mdm,

A well written specification, in a provisional application gives you time to file a continluation if part if experience brings further modifications or additions.

If the specification is complete and a seach has been conducted so that you are aware of the prior art, the final non provisional application, timely filed may be a great improvement over the original invention, tempered by experience.

[Isaac]

Mr. Ivey and Mr. Auslander are dead on.

While different practitioners start at different points in the application (I do the background and then the claims which is more typical of how less experienced practitioners do it), the process of making sure the description supports and enables the claims is an interative one.  Writing the detailed description generally triggers a thought of more possible claims and which in turn must have support in the description.

If you are not writing any claims because you are doing a provisional, then you cut short some of the iterative process and it becomes more likely that your provisional will not support a claim that you later find you want or need.  The consequences of that are well explained on Mr. Ivey's web page.

OTOH if you write a claim that is not fully supported in the description of a *non provisional application*,  the claim is part of the disclosure, and you will simply be required to add the material in the claim to the the description.  No loss of coverage results.   And the omission is far less likely when you are doing the complete application.

If you can avoid the pitfall, then the provisional may be useful to get a filing date if some bar is approaching or to stall while you look for financiing.

There are a few other gotchas too.  They are covered in Pressman's book which you already have.  

[Chris_Whewell]

There is no such thing as a "provisional patent".

There is such a thing as a "provisional patent application"

Below is copied text from an article I penned a few years back on the topic.  Perhaps you will find something useful in here.

PROVISIONAL PATENT APPLICATIONS VERSUS
NON-PROVISIONAL PATENT APPLICATIONS

     Many people are aware of the existence of something called a provisional patent application, as it was created by the GATT treaty and came into being June 6, 1995.  It is common for people to choose to file a provisional patent application instead of a regular, non-provisional patent application in the United States.  Often, I believe they make such a choice based on less than full knowledge.  This paper attempts to provide useful information on the provisional application for patent.

Common Requirements of Provisional and Non-Provisional ("Regular") Patent Applications.

     Both provisional and regular patent applications must each comply with Title 35, section 112 of the United States code.  This is the law of which sets forth must be contained in a patent application in order for it to be lawfully complete (but see the next page).  The law reads:

     "The specification shall contain a written description of the  invention, and of the manner and process of making and using it, in  such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.  The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.  A claim may be written in independent or, if the nature of the  case admits, in dependent or multiple dependent form.  Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.  A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.  A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed.  A multiple dependent claim shall not serve as a basis for any other multiple dependent claim.  A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.  An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."

[Chris_Whewell]

Here is part II:

If a patent application (either provisional or regular) does not conform to the above, it may be declared invalid.  This would be bad if a person were to file something as a provisional application and didn't realize at the time that it didn't conform in one way or another to 35 USC 112, particularly if that person were to later file a non-provisional application and attempt to claim the benefit of the priority date of the provisional.  If the provisional application did not conform to 35 USC 112, then a court may rule that the priority affordable to the later non-provisional application is only the date on which the regular application was filed.  This could have devastating results on the inventor's rights.  Provisional patent applications were not created for enabling American inventors to throw together just any old description of an invention and file it as a provisional application to confer rights on them.

Differences Between Provisional and Regular Application

     A provisional patent application, unlike a regular application, is not required to have claims in it.  This is because a provisional patent application never gets examined by the patent office, and that is why the filing fee is less; the Patent Office doesn't have to do any work on it.  

I think a bad part of this is that an inventor who files a provisional patent application will never know what the patent office's position is regarding the applicant's invention, because the provisional application never gets examined as does a regular application, unless it is converted to a regular application.  Most of the inventors I know want to know as soon as possible whether their invention is patentable or not.  The filing of an application as a provisional delays hearing back from the patent office on the patentability of the invention by up to one full year.

     Also, the filing fee for a provisional patent application is $ 75 (for small entity), whereas the filing fee for a regular application is $ 380.  So the inventor saves a little money, but the application never gets examined.

[Chris_Whewell]

and the last part of it:



Cost of Preparing a Provisional Patent Application

     There are people who advertise very low rates for preparing a provisional patent application.  In my opinion, this is not good, because the legal requirements for having a patent disclosure which complies with 35 USC 112 are the same for provisional applications as they are for regular applications.  This means that a good writer of patent applications will need to spend just about as much time and effort on preparing a provisional application as they would on a regular application.  So, if the person preparing the application were to normally charge
$ 2500 to prepare a regular application on an invention, but would do a provisional on the same invention for $ 500, one must ask where the compromise would be, for certainly the patent application writer cannot afford to spend the same amount of time in each case, especially if they are accustomed to billing customers at an hourly rate for their services.  Therefore, the obvious conclusion is that the quality of the application must be compromised.  In the best case, the breadth of the disclosure would be less than for the $ 2500 application.  In the worse case, the disclosure would not comply with 35 USC 112 and would be technically invalid.  (I bet there are a lot of provisional applications out there that are invalid under 35 USC 112).

     I could prepare a provisional patent application for an invention, but would need for the inventor to tell me where to cut corners.  This would be difficult for me, since I tend to be a creative writer when I prepare patent applications, and in all cases will write a patent application as broadly as I can, which takes a decent amount of time, but is time well spent.

     Typically, it is hoped that the provisional will be either converted to a regular application, or relied upon for the claiming of its filing date as a priority date.  If a provisional were prepared for a low fee initially, the inventor can expect to pay a large sum to the patent application writer at the time the regular application is to be filed.

Benefits of the Provisional Application

The benefits of the provisional application are: 1) the filing fee is less so most independent inventors can save about $ 300 at the time of the filing of the provisional application; and 2) the application is not required to contain claims, so the time in preparing the application will probably be slightly less than preparing a regular application.  But be careful of people who write applications who tell you a hefty price for a regular application, and then quote a much lower price for a provisional, because they won't spend as much time on it, and it is likely that either the quality of the application or its breadth will be seriously compromised.  If they don't ask you where you would like to "cut corners" to save the money, then they're going to make their own decision as to which corners to cut.  I ran across a John Ruskin quote once:

     "It is unwise to pay too much, but it is worse to pay too little.  When you pay too much, you lose a little money - that is all.  When you pay too little, you sometimes lose
everything because the thing you bought was incapable of doing the thing it was bought to do.  The common law of business balance prohibits paying a little and getting a lot - it cannot be done.   If you deal with the lowest bidder, it is well to add something for the risk you run, and if you do that you will have enough to pay for something better."

So, to all inventors, I say:  THE BEST THING ANY INVENTOR CAN DO IS TO GET A REGULAR US PATENT APPLICATION ON FILE AT THE EARLIEST POSSIBLE TIME.

[M. Arthur Auslander]

Dear Mr. Whewell,
The advice you have given is VERY good with the exception of the suggestoin to file a patent application. I do not believe a patent application should be filed unless the nature of the scope of the the invention is likely to produce claims that with be of value in terms of the prrior art and the present invention.

That is why we have the Reality Check® and ELAINE's Workshop®.  E arly L egal A dvice I s N ot E xpensive™.



Without that you join the one in ten thousand that get no reward. What is more it is adis

[mdm]

Let me clarify my statement about my provisional patent application.   Although I did not include any claims in my provisional patent application, I did prepare the claims.   From my vast experience gained in that exercise,  I certainly can appreciate the numerous comments on the importance having a set of claims in mind while writing the specification.   Although I thought I had written a good specification prior to attempting to write the claims, I ended up rewriting much of the specification after I went through the very interesting process of preparing the claims.  My first experience writing claims was truly enlightening, as I began to understand the essence of my invention in broader terms than the specific limited embodiment in which it was originally conceived.   I had to rewrite many parts of the specification to remove limitations that I had originally assumed without really recognizing the limitation of my original mental picture of the invention.  The specification and even the invention itself evolved as a result of the exercise of writing the claims.  
 
My 23 page provisional patent application was about as close as I could come to writing the full blown patent application with the exception that the claims were not included and my drafting was not in accordance with the standards.  

The field of the invention is very active and although I have notorized documentation of my work book, I wanted to get strong documentation of my filing date.  I also thought that it would be prudent to file the PPA before I talked to anyone about market feasibility so I would not risk accidental disclosure.

I had hoped that this approach would help to overcome the “catch 22” that is demonstrated in the collective advice received on my two postings in this forum.  First, you rightfully warn me that my chances of monetary success are very low and I should not invest in a patent without researching many marketing and manufacturing and factors (among other things).   Here I am cautioned about the many pitfall of a provisional patent application.  However, if manufactures wont provide any non-disclosure agreement to review the idea, how can I talk to them about marketability without risk of disclosing the ideas into the public domain.  Do I need (or want) a PPA or a RPA on file before I talk to anyone who will not agree to non-disclosure?    If so, it seems that the catch 22 is that I shouldnt invest in a patent for an idea without obtaining marketing and manufacturing  input but I  need to invest in a rigorously prepared ( and therefore costly) patent before I can talk to those knowledgable about those factors.  I expect there is no good answer to this apparent dilemma.
 
By the way, Mr Whewell cited the cost of a provisional patent as about $500 and a regular patent as about $2500.  Is this realistic or just a hypothetical value to make the point about relative cost.  In Raleigh NC, I am getting “ballpark” figures of  $2-5K for a provisional and $5-10K for a regular patent.  Do I need to shop around harder or is this about the right “ballpark”?

Thanks again to all

[M. Arthur Auslander]

Dear Mdm,

The question is not cost, writing the application, or getting a patent! The big question is whether or not a patent application should be filed, and then whether the application will BEST deal with the REALITIES of the invention.

In some instances the maintanance of a trade secret may be best. There are times when a WEAK patent may have commercfial value beyond the meer scope of its claims.

There are at least two differemt worlds, patents on what you are doing or using and patents that you want to sell or licence. The ones you want to sell or licence usually have to be unusually more sophisticated to have viability.

The used patent may be more useful but oftentimes a even a poorly written patent can help command a market without challenge.

Essentially any patent that does not have a defined future when filed ought to be more professionally prepared if it is to have any possibility of acheiving value and may be better off not being written at all if it cannot result in world beating claims on an iron clad specification.

A bungled patent application may give away technology to be used by all,  that is even if the concept is very innovative.

Understanding this explains the scam patent industry that makes One Hundred Million a year, with only one in ten thousand getting back more than they have paid.

[JimIvey]

Dear MDM,

I have to admit, I'm impressed!  I can't tell if your execution was perfect, but your approach was spot-on for someone who wants a provisional patent application for the right reasons.  

In terms of costs, the fees are $80 for a provisional and $375 (I think) for a non-provisional.  They fluctuate a little, but those numbers are about right.

Personally, because of the approach you outlined above, I would charge exactly the same for writing a provisional or a non-provisional application.  I would be suspicious of anyone charging different rates/amounts for each for the reasons outlined by Mr. Whewell.

The costs for practitioner time is usually billed by the hour and differs widely because of the wide disparity in invention complexity and therefore the amount of description/work to prepare the application.  Keep in mind that Mr. Whewell tossed out numbers without knowing your invention (I assume).  So it's enirely possible that difference in numbers mentioned by him and estimates you've received are due to variations of complexity.

There is an increasing trend to quote fixed prices for patent applications.  I would be very suspicious of a fixed fee for less than $2,000.  There's just too much work for a legitimate practitioner to accept something lower than that.  I would put that in the category of "too good to be true."  But that number and thought just popped out of my head, so don't take is as gospel etched in stone.

Good luck!   Sounds like you've done your homework.

Regards.

[Isaac]

The range of quoted prices for a provisional application for a patent (PAP) stongly suggests the amount of work the practitioner plans to do.  (By the way, I'm relatively local to you in Durham just outside of RTP).

At $500, the practitioner is anticipating spending several hours and no more on your work.  Some corners will be cut.

At the upper range, the practitioner anticipates doing nearly everything he would for a non provisional application.  

I can imagine situations where a $500 PAP would be just fine, but I can imagine others where I wouldn't draft one without trying to talk the client out of it.  

[Chris_Whewell]

As stated above, the total cost depends on the complexity of the invention.  The more complex inventions require more skill and effort to prepare an application.   I agree with what all the others have stated above about my earlier postings.

The field of technology is also pertinent.  You can find someone to do anything for a low price, but quality is extremely crucial in a patent application, and in my opinion you should only employ a seasoned professional in the particulr area of tech to which the invention pertains.  Remember Ruskin's quote cited above.

In addition to paying for the application prep and filing, also added in the cost is the responsibility factor.  Taking on a client involves a lot of responsibility.  If someone does a case for $ 500, I'd be concerned about quality, unless they are into philanthropy.  But if that were the case, then they ought to do it for free.

The price for having a spec prepared and filed on an invention of "typical" complexity, including representing you, will depend on the lifestyle of the practitioner whom you hire.  If they are into a new mercedes 600 series every two years, have oaken doors and a lot of brass in the office, a summer house and a yacht, they will probably charge more than a practitioner driving a Buick who lives debt-free and is of "simpler" means.   I'd say about $ 3300 to about 4000 for an invention of "typical" complexity is a good figure.

Personally, I wouldn't use a provisional ever.  

[M. Arthur Auslander]

Dear Mr. Whewill,

A GOOD  provisional application gives time for reflection and improvement in the filing of a non provisional application with good claims.

You put the cart before the horse when you say the cost of the patent appllication depends on the lifestyle of the patent lawyer. The quality of the invention with the lawyers skill may determine the lawyer's  lifestyle.

Then of cource, there is the industry that files patent applications as part of the $100,000,000 a year industry where only one in 10,000 get back more than they pay.

Some inventions are just not patentable. Just because an invention is patented does not mean that the essense of an invention cannot be acheived by others without infringing an issued patent. How can you put a  price on a patent application and prosecution?

There are anomolies. I had a cllient that wanted the prestige of a patent on a prodcuct. The client licenced an avoidable patent for the product from Jerry Lemelson.

The Lemelson name may not ring like Edison. Lemelson, who recently died, very rich obtained more patents than any there person ever.

In his early years Lemelson could not afford good patent lawyering, so he even wrote many of his own patent applications.

He consulted me about one of them that he had written (there was no conflict of interest between me and the other client). The words were there, but they were not  consonant with the getting of broad claims he needed for adequate protection.

I could not afford to spend the time to refile the application and he couldn't afford to pay me so we parted friends.

What is the cost of a worth while patent application? Several thousand dollars to infinity and even then there is no certainty that money can be made.

Some inventions are just not patentable. Just because you get a patent doesn't mean you will make money.

[Chris_Whewell]

I agree.   There are many risks involved, such is the nature of life itself, I suppose.  There are no guarantees.

It is those inventors who are willing to take risks and make sacrifices who had changed the world forever with their invenitons.  If everyone who sought to do a patent did some sort of formal analysis beforehand, in most of the cases the answer would probably have been "Don't waste your time".  But they didn't care about fancy analyses or what other people thought.  Such is the pioneering nature.

When Edison invented the light bulb, there were many who laughed and said it would never come into popular use.   Same thing for Bell's telephone - at the World's Fair most people laughed at it or dismissed it as an amusing curiousity.

Same for the personal computer.  Xerox sure pulled a boner on that one, eh ?  

It was predominantly those who were willing to take risks who succeeded.  So, every inventor faces some risk.

When people ask me what I think of their inveniton, I refrain from commenting, since my comments are really meaningless.  If the inveniton seems silly, then that might be a good sign in view of the fact that the same was said for the telephone.

The risk is almost entirely on the inventor.  Those willing to take risks may be handsomely rewarded.  Those too timid to take risks may find refuge in a harmless hobby, such as knitting, mah-jong, or political discussions !