Patent

Patent Guidance: 10 Criteria for Deciding when to File a Non-Provisional Patent Application

Ironically, the tasks of preparing and filing a patent application might be less stressful than actually making the decision to file.
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Posted on
March 20, 2020
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Ironically, the tasks of preparing and filing a patent application might be less stressful than actually making the decision to file. Very often, inventors file a provisional patent application, get “patent pending” status for 12 months, and then stress over whether to file a non-provisional patent application before the provisional patent application expires. Here are 10 criteria to help make that decision easier.

  1. Revenue: if you are already generating revenue from your innovation, then you should be able to do a quick calculation to determine whether or not you can afford to spend $10-30k (or whatever your attorney quotes you) for preparing, filing, and getting your patent application through the examination process.  
  2. Business Model Maturity: If your business model is set, then you have higher assurances that you will continue to pursue the same product lines in the future. Otherwise, startups who pivot business models should consider whether a pivot might render their current patent portfolio more or less valuable.
  3. Product Lifecycle Expectancy: If you’re operating in a market where the product lifecycle expectancy is very short—new products get replaced by newer products every few years, then starting your non-provisional patent application sooner can be helpful. Although the patent process might not move fast enough to protect your actual product while it’s on the market, an issued patent will help deter fast-following copycat products from coming to market with your claimed inventions.
  4. Product Design Maturity: If you’ve settled on a product design and received market validation, then you’re more likely to draft your patent application around your specific design. If your product design is still being developed, consider using provisional applications to capture significant improvements until you reach a deadline.
  5. Manufacturing Maturity: Similar to product design maturity, many innovators find that a final product design isn’t really finalized until they have tried to arrange manufacturing and, inevitably, changed some of the features of their product design to optimize manufacturability and/or cost savings.
  6. Priority Timing: If you’ve filed a prior application, the status of that application can force deadlines on you. For example, a provisional patent application expires after 1 year and cannot be extended, so you must decide whether to file a non-provisional patent application if you want the benefit of the earlier filing date of your provisional patent application. In another example, a prior non-provisional application that is being abandoned or granted will impose deadlines on whether you can file additional applications in that same family. Foreign and international deadlines can also apply.
  7. Protection/Enforcement Timing: Sometimes competitors or new market entrants are an incentive to file a non-provisional sooner, so that you can obtain your issued patent and right to enforce your claims sooner than later. If this is the case, you should also consider accelerating the examination process.
  8. Ownership Structure: Try to settle your intended ownership structure for your patent portfolio before filing a non-provisional patent application. Keep in mind that patent applications can have both inventors and assignees (i.e., the entity who received the ownership rights from the inventors). Also, disputes about ownership structure can be complicated by the different inventorship standards for provisional patent applications (based on the overall disclosure) and non-provisional patent applications (based on the claims, instead of the overall disclosure).
  9. Bar Dates: Certain activities by inventors and other parties can create a “bar date” after which the inventors are legally not entitled to a patent. This isn’t limited to non-provisional patent applications, but the effects become more apparent once examination of the non-provisional patent application begins. Starting the non-provisional patent application process sooner usually prompts the inventors to be more detailed and thorough than they otherwise might be with a provisional patent application, resulting in a higher probability of getting proper protection before a bar date arrives.
  10. Foreign Patent Rights: Although the US offer inventors a grace period before filing, most foreign countries do not. This is not limited to non-provisional patent applications, but preparing a non-provisional patent application can help avoid certain issues that are more likely to arise if only a provisional patent application is filed. The more formal requirements are more likely to ensure compliance with the official requirements in foreign jurisdictions, whereas the informal requirements for provisional patent applications typically will not be sufficient.

These are common criteria you should consider, and your circumstances will probably benefit from other specific criteria, too. Also, remember that it’s much more cost-effective to aggregate multiple non-provisional patent applications into a single non-provisional patent application, instead of trying to combine disclosures of separate non-provisional patent applications later. Hopefully this list of 10 criteria will help you be more confident when making your non-provisional patent filing decisions.

[This post was originally published May8, 2018, on LinkedIn by Jeff Holman.]

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Legal Disclaimer: This general information does not establish a legal relationship with any attorneys or law firm without a written and signed legal representation engagement agreement.

Jeff Holman
Jeff Holman draws from a broad background that spans law, engineering, and business. He is driven to deploy strategic business initiatives that create enterprise value and establish operational efficiencies.

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