How Do Inventors Go To Market? (Part 4) From Patentability Opinion To Patent Application
If the patentability indicators are poor to moderate, that doesn't mean you don't have high profitability indicators! A poor patentability outlook just points you in a different direction, saving you valuable time and money on the possibly fruitless pursuit of a patent. (We'll follow some of the non-patent roads in my next artcle.)
After you have reviewed, assimilated, and discussed the results of your patentability opinion with your patent attorney, you will have enough information about your idea to make some informed decisions about the direction of your invention. Having that information can give you a real sense of accomplishment and power. From this point until your product is selling, you get to feel power and accomplishment... umm... not that many times. So enjoy it!
File A Provisional Patent Application... Now???
Yes. At this point in the invention process, if you haven't filed a provisional patent application, do so. Although most inventors file the provisional patent application prior to doing a patentability search and opinion, I prefer doing the provisional patent application after receiving the result of the patentability search and opinion. Why? Because your patent attorney now knows what you can claim as new, and that gives you the opportunity to tweak your original idea or completely change facets of it before you commit to your claims.
Remember, the only time you benefit by the earlier disclosure of invention is when the description of your invention in the provisional patent application discloses the same claims you make in the non provisional patent application. In other words, if you've described an elephant in your provisional application and he's wearing wingtips in your non provisional patent application, you may not claim your earlier date of disclosure.(See How Do Inventors Go To Market? (Part 2) The Provisional Patent Application)
In any case, even if your intention is to immediately proceed to a full patent application, file a provisional patent application now, with your attorney's help, because the non-provisional application will take more time to prepare. You will be able to claim the earlier date if you do file, and even if you don't file you will be able to use the patent pending status while you prospect for licensees, vendors, or others involved in marketing issues.
What A Positive Patentability Opinion Means To Your Bottom Line
A positive patentability opinion can offer a big boost to your marketing opportunities and potential value of your invention. First, although the opinion is confidential from your attorney to you, you may choose to share it with prospective investors or licensees (with a signed non-disclosure statement that offers mutual protection... your patent attorney will have one), to encourage their interest in becoming involved in your invention. If you are desirous of licensing your invention to another business, that company would be more likely to contribute financially to your patent application if your opinion is positive. Additionally, your negotiation leverage will be stronger with a positive patentability opinion.