Should I Write My Own Provisional Patent?

Many inventors like to write the provisional themselves and hope that a patent attorney can turn that provisional into a utility patent at a later date.

Category:

Education

Tags:

• provisional patents
• patents
• copyrights

[Shabasky1]

@EricHanscom What do you mean? How would they go after it? Can they claim it for themselves during the patent-pending process or a window between the provisional and the non provisional?

[EricHanscom]

The potential problem being that by approaching an industry leader with your patent-pending technology, you are also alerting them to your attempt to patent technology they may consider to be within "their" territory, in which case they can go after your patent application and/or any issued patents.

[EricHanscom]

Hi Elliot, A couple of things here. First, whenever your invention is close in scope to existing patents, you have to be careful not to create a device that infringes one or more claims of an existing and active patent (don't worry about the patents older than 20 years). Approaching an existing industry leader can be a good way to try to sell your patent rights, or look into a licensing arrangement, BUT, if you anger the proverbial 800 pound gorilla in your industry, good luck.

[ElliottDollar]

For example, if my project takes the same shape in regards to scope, scale, market price and potential mfg & buyer as the U.S. Patent No. 7,140,318, do you think I could securely approach a boat mfg to buy my idea with provisional protection that I filed myself? I read your website! From one surfer to another, can you help a brotha out? Thnx! -E$

[ElliottDollar]

Eric, thanks for the information! This video is helpful for me because I'm considering filing my own provisional. I feel that the provisional will help me securely raise the funds it will take to hire a pro like you to draft, file & defend the utility. For the provisional, I feel I'm capable; for the utility, I feel like you get what you pay for. With a working prototype, any advise for a serious inventor in the wakeboard boat accessory industry?

[EricHanscom]

Hi Dare, Yes, you are correct in that if you make a major change to your invention that a utility patent application is no longer "supported" by the provisional, you can just file a utility patent application on the “new” invention and disregard the provisional.

[EricHanscom]

By not claiming priority back to the provisional filing date, your utility patent application will have an effective filing date of the day you file the utility patent application (rather than “reaching back” to claim priority from the provisional).

[EricHanscom]

This can create problems when inventors have not been diligent in filing the provisional before they disclose the invention. For example, Inventor A files a provisional on 1/1/2009, then displays his invention at a trade show on 4/4/2010, the files a utility on 12/30/2010.

[EricHanscom]

The utility has a priority date of 1/1/2009, which avoids the 35 USC 102 bar (disclosed more than a year before filing). Inventor B, on the other hand, shows off her invention at a trade show in on 9/9/2008, gets some positive feedback, so she decides to file a provisional on 1/1/2009, then she changes her invention substantially, files a utility application on 12/30/2010 that does not claim back to the provisional filing date.

[EricHanscom]

Her trade show disclosure is now more than a year before the effective filing date of her utility, so the item she showed at the trade show is now valid “prior art” against her utility. Since she has “substantially changed” the invention, her trade show disclosure will probably not present a 35 USC 102 “same invention” danger, but probably will cause her 35 USC 103 (“obvious improvement”) problems during the prosecution of her application.