How Do Inventors Go To Market? Part 2: The Provisional Patent Application

In my last column, I introduced you to the paths you can take to bring your product to market as an inventor. (see To Market To Market: How Do Inventors Go? - Part 1 ) These paths are, by no means, mutually exclusive; most inventors combine at least two of these routes; some all four. But we are looking at each path individually now so that you can decide which of them is appropriate for your invention, your budget, and your goals.

We’re going to break this model apart then, so that you can make a full list of pros and cons for each option. Let’s begin with the Provisional Patent Application (PPA), as that seems to be a very common first step for inventors.

The PPA allows you to “register” the date of your invention at the United States Patent and Trademark Office (USPTO) before you make a formal application for consideration of your patent (non-provisional patent application). In addition to the introductory pages (use PPA Application Cover Sheet (2 pp) in which all inventors must be listed, you must provide a complete description of your invention, including what it is, what it does, how it does it, and how it will be made, along with drawings depicting the same information. (see USPTO Provisional Patent Application)

Five Important Benefits of Filing a Provisional Patent Application

There are several benefits that make filing a PPA a popular choice among inventors. The main reasons I like this choice are:

1) The date that your PPA is officially received by the Patent Office acts as the date of record of your invention. To me, this is the most important reason to file a PPA, as it establishes your right to claim that the invention was “novel” when you created it. If another person or a company later files a PPA or an Non-Provisional Patent Application (NPPA) on the same invention, the Patent Office will have evidence of your claim to it. If you do receive a patent on the invention, the PPA also extends the life of your patent by one more year and gives you two years from submission to file for foreign application.

2) A filer can legally use the notation Patent Pending on her products, prototypes, drawings, and any other disclosure of the invention from the date the PPA is filed. This is important to those of us who want to test the waters with a little bait for prospective customers or licensees, as the mark “Patent Pending,” theoretically, keeps other companies from knocking off your product. As a practical matter, the Patent Pending mark will deter some companies, but not always all companies. It is also important to understand that Patent Pending is a warning to others that you are applying for a patent; it is not a legal protection; the only thing that legally protects you from idea thieves is an officially awarded patent. (I hate to be cynical here, but what really protects you is the money it takes to bring an idea thief to court – more on this subject in future columns!)

Cancellation Announcement
Disclosure Document Program

3) A PPA can be written up to a year after you have disclosed the idea for your invention in another form, say a paper, journal article, or even a sale of the invention. This gives the inventor additional time to work out any kinks in the invention.

Dec 11, 2006
by Brett Trout (not verified)

Document Disclosure Program

Good article. I just wanted to remind your readers that as of February 1, 2007, the United States Patent and Trademark Office will no longer be offering the $10 document disclosure program. Given the benefit (or lack thereof) the program offers inventors, it appears the program was actually significantly overpriced.

Just like the old wives tale of protecting your invention by sending yourself a letter with the invention disclosed therein, the document disclosure program apparently gave some inventors a false sense of security that the document disclosure program afforded them something more than a conception date. According to the Patent Office, some inventors erroneously believed the document disclosure program was the equivalent of filing a patent. Finding that the document disclosure program provides little in any benefit to inventors, the Patent Office has discontinued the program.

If your only concern is obtaining a date of conception, a provisional patent application will provide the same protection. If you are actually interested in protecting your invention though, a regular patent is still, by far, the best option.

Dec 11, 2006
by Myra Per-Lee

Disclosure Document Program

Thank you, Mr. Trout, for letting us know about the cancellation of the Disclosure Document Program (DDP). We located the announcement in the Federal Register and will add the information to the article.

I am surprised at the Patent Office's rationale for failure of the program, as it said that DDP applicants didn't follow through with patent applications because they thought the DDP was a patent application!!! Come on! Inventors know better than that.

A lot happens between the time an inventor prepares his first drawings and the time he files an application... things like the inventor learns it's already been patented, or it's not a practical solution, or it's not a money maker... or, even more likely, the inventor has lost enthusiasm for the invention and shelved it.

I agree that there is a lot more benefit to the Provisional Patent Application. Thank you for writing in.

Myra Per-Lee Featured