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Eating Your Cake While Keeping It Whole

Updated: Aug 26, 2020

On many occasions clients ask me whether they should file a US provisional patent application (PPA) and if so, how to do that when both time and finances are short.

PPAs provide an early priority date for your invention without incurring the often-high costs of a full patent application – but they can backfire.

Let me be clear: the best way to prepare a PPA is to prepare a regular patent application with a patent drafter, and then file that work as a provisional application, enjoying the flexibility and additional benefits of a PPA.

But here we have a conflict: Preparing a PPA like a regular patent will bring all your time and costs back up, arguably eliminating its most attractive benefits.

How can you enjoy the benefits of provisional patent protection while avoiding the risks?

(To better understand this conflict, I’ve recently published a book, together with patent attorney Larry Goldstein. Find more details below.)

First, one must evaluate the available options for protecting the innovation. The issue becomes complex when there is an “emergency”. For example, when a large company has an unplanned opportunity to present a newly developed product feature to one its customers. Or a startup finds itself with a short-notice opportunity that requires disclosure of its latest product developments with potential investors.

In both scenarios, moving forward with no patent protection whatsoever is foolish – you want to keep that cake. The PPA is the only option.

The PPA is also the ideal option in these situations. It enables business activities and its disclosure prevents competition. While not risk-free, when executed correctly, it provides the priority date and protection with minimal time and cost.

What needs to be done to make the PPA do the job effectively?

Here are some key ingredients:

  • Always provide clear definition of what it is you’re trying to protect, the unique invention. Focus is essential.

  • Define your invention’s key terms in words, using annotated figures, or ideally both. Be sure to avoid ambiguous use of terms and ‘shifting terminology’ that reduces clarity

  • Provide multiple examples of how the invention can be used and enhance these also by providing annotated figures.

Of course, these are just a few ingredients for your cake. Our book provides more guidelines for what should be done and what should be avoided when preparing high quality PPAs.

For Provisional Patent Applications: Use and Abuse, we analyzed more than 100 PPAs that were reviewed and or litigated in the US Patent and Trademark Office, the US court system, and the Technical Board of Appeals of the European Patent Office. Of these, we discuss over a dozen which we felt would represent and illustrate both good and bad PPAs.

As an executive, engineer or inventor, your PPA may have particular issues which need clarification or advice. I’ll be happy to talk with you anytime to provide specific guidance -- feel free to contact me.

Gil Perlberg is an IP development business executive who specializes in the creation of high-value patent portfolios.

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