Each Founder’s Stake In, and Contributions Toward, The Startup
You will come across inventors and CEO’s that will tell you wildly different information on whether or not an attorney is required to start the patent pending process. However, there is no one steadfast rule that exists as to whether or not to hire an attorney in order to apply for a provisional patent application (“ppa”) with the US Patent and Trademark Office (“USPTO”). This is because just like every patentable invention is unique, so is every inventor. Some inventors have used patent pending status before and are, therefore, very comfortable doing this by themselves. The decision to hire an attorney depends on several factors, including the complexity of the invention, the possibility that your patent will be challenged, and the time that you personally have to commit to the sometimes-involved registration process.
Before making the ultimate decision to work with a patent attorney to file your application and obtaining patent pending status, it is important to have some understanding of the provisional patent application process. Once you have filed for a PPA you can officially claim “patent” pending status.
What is a provisional patent application?
A provisional application is a form of product patent application that can be used before the filing of a full utility application. A utility or product patent is a patent that covers the creation of a new or improved—and useful—product, process, or machine. The provisional application acts as a placeholder with the US Patent and Trademark Office – USPTO. This placeholder establishes the filing date of your invention.
A provisional patent application is not checked or verified by the USPTO. Instead, it states that on a given date an inventor has demonstrated the intention of placing a product patent on said invention. This is beneficial to show that you are the first person to attempt to patent this idea if another similar patent is filed before you are ready to file your official non-provisional product patent application. In the US this is vital because we follow the first to file philosophy. So, even if you’ve been working for years, you are out of luck if you were not the first one to file a product patent on this particular invention – and the provisional patent application helps here. The earliest of filing dates prevents your competition from beating you to the punch.
It must be remembered that a provisional patent application is not to be confused for an actual patent. It will ultimately offer no protection unless a utility patent application is filed and granted by the USPTO. Plus, if a full patent application isn’t filed within 12 months of the initial filing, the provisional patent application will lapse and the inventor loses all claims to that filing date.
The Steps Required for Patent Pending
To get a patent pending status, complete and file an application. Your packet should include:
- A cover sheet
- A detailed description of how to build and use your product
- Drawings of your invention
- The required fees
The Non-Provisional Patent Application
Not every inventor files a provisional patent application. Some go right ahead and file their non-provisional patent application – which, upon filing, also grants the ability to use the “patent pending” status until the examination has been completed by the USPTO.
Additionally, if you do file a provisional patent application first, you will have to file your non-provisional patent application within one year to continue using “patent pending”. Once your patent is up for examination with the USPTO you still have a patent pending – and the examination process can take years to complete.
A patent attorney is especially useful when filing your non-provisional patent application as this document can only be altered with a fee. So, if you fail to fully describe an element or make any kind of mistake at all this will not only delay the time your examination with the USPTO takes it will also cost.
Some of the best reasons to work with a patent attorney
Time is often a barrier for inventors during the patent process. That is because this is a long and complex process. Among the tasks required in this process are:
- determining if your invention is patentable, including a showing that it is useful, innovative, novel, and non-obvious
- creating, documenting, and filing all applicable application documents, including descriptions, claims, drawings, and other forms
- performing patent research, both in the United States and abroad, regarding the existence of potential patent infringements
- filing the regular or provisional patent application
- paying applicable patent application fees, and
dealing with USPTO examiners during the application examination process
Utilizing a seasoned patent attorney allows you to focus on your business and maybe your future inventions. While it is not impossible to be granted a patent without talking with or using a patent attorney at all, this makes the process longer and harder on the inventor.
How to find the right attorney
LawTrades is stacked with knowledgeable patent attorneys that can assist you in filing your provisional patent application and obtaining “patent pending” status quickly and accurately the first time.