Provisional Patent Applications: The road to securing your patent rights

Provisional Patent Applications?

Business owners, investors and bankers consider national and foreign Patents and the goods and services associated with those Patents to be both intangible and tangible assets. Provisional Patent Applications are viable options for augmenting a company’s intellectual property portfolio.

Potential Patenting Pitfalls

There is a road you must travel  from inventor’s inspiration to the successful marketing and sales of the patented product, system, method, etc. That road must have well engineered bridges to successfully navigate the ravines that can otherwise destroy market share and Patent rights.

For example, the 2011 America Invents Acts includes a “limited grace” period to file a Patent Application – provided the conditions of 35 United States Code 102(b) can be fulfilled. However, is it prudent to rely on 35 United States Code 102(b), when an inadvertent public use of the invention can forfeit both national and international Patent rights for the invention that was inadvertently disclosed?

Provisional Patent Applications

Subsequent to the 2011 America Invents Act, the sensible business owner or CEO should consider filing Provisional Patent Applications to preserve future Patent rights.  Broad scope Provisional Patent Applications:

  • Provide substantive and procedural rights for one year from the filing date.
  • Permit the enterprise to make improvements to the invention disclosed in the Provisional Application which can subsequently be incorporated into a Nonprovisional Application and filed in a Patent Office before the expiration of the twelve month filing period.
  • Prevent public use, public disclosure, offers for sale and for sale bars to future Patents.
  • Allow the business to test-market the invention.
  • Allow the company the time to discern the real “inventive genius” of the invention.
  • Allow use of the Provisional Application as the priority document for national, foreign and international Patent Applications.
  • Encourage American inventors and engineers to quickly adjust to the worldwide “first to file” systems and to file the Patent Application, soon as possible, in at least one Patent Office.
  • Make it easier for the company to determine the relevant pool of capital for investment.

Provisional Applications Are Not The Only Solution

Changes happen slowly for some inventive segments of the global economy. For such inventions, the marginal costs of filing a Provisional Patent Application before filing the Nonprovisional Patent Application may not be warranted. However, if management has any doubt, it is wise to file the Provisional Application and be “safe” rather “sorry!”

Contact Business Patent Law, PLLC and we will discuss your business and Intellectual Property essentials.

If you would like to stay abreast of changes and other news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter

legal contracts online downloaded from the cloud

Legal Contracts From The Cloud?

Legal Contracts Online

Are you considering the use of downloaded legal contracts online? Before you do, you need to know a bit more about the pros and cons of using legal contracts you may find in the cloud.

Business owners, investors and bankers consider Intellectual Properties and the products associated with those Properties to be both intangible and tangible assets. Because these assets are the lifeblood of many companies, it is wise to use a seasoned professional to prepare your Intellectual Property agreements.

Cloud Intellectual Property Contracts

With the intent of saving money, sometimes a business drags a contract for intellectual property out of the Cloud.  On rare occasions, the Cloud strategy may be adequate for the business. (This is especially true if the agreement is never challenged.)

If, however, you pull a contract off the Internet and it IS challenged, you may find yourself in an expensive legal quagmire. More importantly, you may lose the challenge along with your rights to your Intellectual Property. Consider your needs carefully before using legal contracts online.

Patents, Trademark and Copyright Agreements

When Intellectual Property contracts are prepared, each genre has its own eccentricities. For example:

  • Contracts associated with Copyright rights frequently include the phrase “all rights reserved.”
  • In many jurisdictions, the sale or license of Trademark rights must also include the goodwill associated with the Trademark.
  • License agreements flowing from Patent rights should generally include royalty milestones, among other things.

Intellectual properties are unique and the facts associated with each Intellectual Property agreement are also different. A well-drafted contract takes time and expertise to prepare properly. This is not a “one-size-fits-all” legal situation and legal contracts online are usually too general to be of use.Continue reading

Intellectual Property Copyright Law Example

What Types of Property Can Accrue Intellectual Property Rights?

The Building Blocks of Your Business

Like many of their larger Fortune 500® counterparts, most creative companies know intellectual property is their most valuable asset. Intellectual property rights are essential in the legal exclusion of competition. Endeavors thrive because of their intellectual property, and due to Treaties enacted by many of the World’s governments, creative intellectual property owners often find the privileges and monopolies flowing from their Patents, Trademarks and Copyrights to be global in scope.

Protecting Your Products

Creatives with business savvy understand the importance of excluding competitors from competing directly against their product or service. In today’s far-reaching marketplace, only the most resourceful people have any hope of surviving the assault of their cheapest cutthroat competitors.

In the end, most creative start-ups find their intellectual property assets are the lifeblood which sustains them against the onslaught of larger and better financed rivals. History is replete with examples of this reality. At the same time, recent reports demonstrate Wall Street investors reward creative entrepreneurs, who are well-endowed with valuable intellectual property holdings.

Patent rights are excellent assets.

What Property Can Be Protected?

What kind of property is sufficiently creative to be protected by intellectual property rights? Business Patent Law, PLLC offers the following criterion to appraise the potential value of owning Patents, Trademarks and Copyrights.Continue reading

Leahy-Smith America Invents Act changes Patent Law

America Invents Act (AIA) Celebrates 5th Anniversary

What is the America Invents Act?

The Leahy-Smith America Invents Act was signed into law five years ago today. This legislation changed the legal landscape of patent system in the United States.

Prior to the America Invents Act, the United States was “first to invent” nation – meaning that the first person to invent the invention was presumed by the United States Patent and Trademark Office (USPTO) to be the inventor.

What is the Significance of the America Invents Act?

Pursuant to the America Invents Act, the United States is now a “first to file” nation – meaning that the first person to file the necessary documents in the USPTO is presumed by the USPTO to be the inventor.

How Does This Change My Intellectual Property Needs?

Because of the Leahy-Smith American Invents Act, more and more of my clients are opting to file Provisional Patent Applications.  Under the America Invents Act, filing Provisional Applications eliminates some of the pitfalls that were not a problem for Applicants prior to 2011.

Proponents of the Act say this law streamlines the process and encourages an increase in domestic innovation. Opponents of the Act have claimed that the changes favor large business over micro-businesses and the individual inventor.

To learn more general information about the changes implemented by this law, contact Business Patent Law, PLLC and we will discuss how these rules apply to your inventions.

If you would like to stay abreast of changes and other news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.