This was part of a presentation at the recent National SBIR Conference: From the paper, "Protecting Intellectual Property" James C Wray, Registered Patent Attorney National SBIR Conference, Bellvue, WA October 2000 Under new patent laws which took effect on June 8, 1995, provisional applications may be filed in the United States. A provisional application requires the filing of only a specification in compliance with the first paragraph of section 112 of the United States patent law and drawings where necessary for the understanding of the invention. The application names the inventors, includes the appropriate filing fee and includes a cover sheet to identify it as a provisional application. A provisional application does not require a claim or an oath or declaration. A provisional application cannot mature into a patent-, it is not examined, and it cannot claim priority of an earlier application. A provisional application is kept in confidence by the United States Patent Office. A provisional application will automatically be abandoned by law one year after filing. The provisional application has important benefits. It places United States applicants on an even footing with foreign applicants because the filing of a provisional application does not trigger the start of the 20-year patent term- It has minimal legal and formal requirements. The provisional application provides a mechanism whereby applicants can quickly and inexpensively establish an early effective filing date and use "patent pending". A constructive reduction to practice is established for any invention described in the provisional application. The filing of a provisional application also defers utility patent application costs and provides up to twelve months to further develop the invention, determine marketability, acquire funding or capital, seek licenses or start manufacturing. -----Original Message----- From: Jeff Myers [mailto:xxxxxx@SIU.EDU] Sent: Wednesday, January 17, 2001 11:55 AM To: xxxxxx@HRINET.ORG Subject: Re: "provisional patent application" Richard: We use provisionals frequently. There is no requirement for claims in a provisional, it is not reviewed, it is relatively inexpensive, and it buys you an extra year of patent term (as well as the important advantages that Tom described in his post). You could get into an extremely lengthy discussion of the pros and cons. One significant drawback/risk is that the description in the provisional must enable the claims in a subsequent regular patent application. You can add supporting data developed later but claims must be foreseen by the original description (other claims would have a later priority date). A hasty filing of a relatively undeveloped invention disclosure could prove to be of little value. We never file a provisional without using patent counsel to help develop the application. While there is no requirement for claims, we draft the applications with at least some claim-like language and try to determine and reference all of the potential utilities and fields of use. There's a balancing act of sorts in that you want to envision all the potential of the invention but you don't want to use language so specific that it limits the claims in the regular application. Our attorney fees for provisionals have generally been below $2,000 but have ranged from $750 to $4,000 depending on many factors (well worth it I think.) Jeff At 10:43 AM 1/17/01 -0500, you wrote: >This may be the wrong listserve for this question, but any advice, >reccomendations, or comments would be appreciated. > >One of our faculty has developed what he considers to be a >potentially patentable process. RCT has reviewed his disclosure >information and has decided not to pursue a patent due to its >limited commercialization potential. > >The faculty member's brother, who is a patent attorney has advised >him to try and register a "provisional patent application" while he >(and the university) looks into other routes for getting a "full" patent. > >I am not familiar with this provisonal application. Apparently it only >costs $75, but I am not sure what sort of protections it provides to >either the institution or the inventor. > >Richard > > > Dr. Richard H. Moore > Assistant Vice President for Grants and Sponsored Research >Coastal Carolina University Internet: xxxxxx@coastal.edu >P.O. Box 261954 Voice: 843-349-2050 >Conway SC 29528-6054 FAX: 843-349-2726 > > >====================================================================== > Instructions on how to use the RESADM-L Mailing List, including > subscription information and a web-searchable archive, are available > via our web site at http://www.hrinet.org (click on "Listserv Lists") >====================================================================== ___________________________________________________ | Jeff Myers | Office of Research Development and Administration | Southern Illinois University | Carbondale, Illinois 62901-4709 | (618) 453-4543 | Fax 453-8038 | http://www.siu.edu/worda/tech/ ___________________________________________________ ====================================================================== Instructions on how to use the RESADM-L Mailing List, including subscription information and a web-searchable archive, are available via our web site at http://www.hrinet.org (click on "Listserv Lists") ====================================================================== ====================================================================== Instructions on how to use the RESADM-L Mailing List, including subscription information and a web-searchable archive, are available via our web site at http://www.hrinet.org (click on "Listserv Lists") ======================================================================
