Provisional Patents Don't Exist - Never Say Provisional Patent!

[@CaliVapor]

A successfully submitted PPA allows you to put “patent pending” which is a deterrent…

[@xiolana]

Thanks for the clarification. They say this lot on Shark Tank and I have never heard it be corrected.

[@PatentsDemystified]

Yes! People say this all the time on Shark Tank and it drives me nuts. :)

[@stuartfox5989]

You are correct - the reason is that Shark Tank and indeed all television programs are primarily for entertainment AND to get people to WATCH ADVERTISING - which after all pays the bills. In Australia it is defined as a 'Patent Application accompanied by a Provisional Specification' and the next stage is defined as 'A Patent Application accompanied by a Standard Application.' The US equivalent of the latter as a 'Non-Provisional' (since the introduction 'Provisional Applications') is also strange although some people refer to it as a 'Regular Application'. Ditto the US Design Patent - esp. since many people fail to mention that they are referring to a Design Patent rather than a 'Utility Patent'.

[@wnhuynhhi]

Great content. Thank you for posting this

[@PatentsDemystified]

Thanks!

[@TheWeirdSide1]

Yeah, I'm definitely calling it what it is. It's a step in getting a patent. It's something arranged for the present that can be changed in the future. Feel free to call that whatever you want(dark matter, for instance) but I'm calling it A PROVISIONAL PATENT. Sue me. If a lawyer's brains will explode at trying to understand practical language, that's just one less lawyer charging arm and leg on good citizens.

[@jonsmith7718]

Yes a good tip, simple misunderstanding can create more serious problems.

[@PatentsDemystified]

Exactly! Thanks!

[@33samogo]

The more I delve into the PPA preparation, the more I am excited about PPA, it's a really fantastic option not only for independent innovators, as I am, but also for companies with high invention productivity who can use PPA strategically (If the invention is complex, you can file updated PPA every month for years before filing NPA). I wonder what are the weak points of PPA. What if a company A applies a PPA and then markets a product based on the PPA patent pending status before it applies the NPA, and another company B sues A for infringement? So A has not yet obtained a patent ( neither NPA has applied yet), what should A defend with, with a PPA which does not contain any patent claims? If the patent granting process takes three or more years, the company cannot wait all this time to market the product, this is a killer situation. It is the same if an independent innovator wants to license a patent pending PPA even before he has applied for an NDA or before the patent granted. Do you have quick answer for this situation, thank you as always!

[@PatentsDemystified]

Yea, PPAs are indeed a fantastic option for independent inventors and startups. There is rarely a case where they are not the best way to start the patent process for these folks. One thing to note about the strategy to "file updated PPA every month for years," folks need to remember that provisionals expire at the end of one year and you must file a non-provisional that claims priority to it before it expires; otherwise, the priority date is lost. You can't just keep filing PPAs without filing a non-provisional before they expire. However, filing new PPAs to cover products as they develop and change is a good idea as long as your also filing NPAs to maintain the priority date. Also, lots to unpack with the second part. First, both provisional and non-provisional applications have this same problem you raise and it does not matter that they have claims or not. PPAs and NPAs are the same in that neither are enforceable in any way initially and just provide a priority date for what's disclosed - the presence of claims or not does not matter. PPAs don't ever mature into issued patents themselves and NPAs need to go through examination and get issued before they are enforceable. The issue with potentially getting sued for patent infringement before you get an issued patent is just as valid for a PPA as an NPA. Also, just because you have an issued patent on a product does not mean you can't still be infringing someone else's patent. For example, you could have an issued patent with claims that have elements ABC+D where D is the point of novelty that got you allowance. Someone could have gotten an earlier patent with claims to ABC and you would still infringe with your product that has ABCD since this still contains ABC. Having your own patent on ABCD does not make any difference and you still infringe the other patent. This is just the risk you take on when starting a business. The best thing to do is file your patent application at the right time and immediately start marketing/selling the product. Waiting years to get an issued patent does not help you at all and is setting yourself up for failure and unnecessary cost. As for licensing, you can definitely license a PPA, just as you can a pending NPA or issued NPA. Hopefully this addresses your questions and concerns.

[@elcarlissimo]

Great advice!👍

[@PatentsDemystified]

Thanks!

[@TainaPR2024]

Question: at what point in the process can you put the product to market? Do you have to wait until the examination process is complete? That part isn't clear to me. Because it sounds like there's no official protection until the patent is issued, but it sounds like it can take years.

[@PatentsDemystified]

Definitely don't wait until your non-provisional application goes through examination and issues as a patent. As you note, that could take years. The best time to start selling a product is immediately after you file your first patent application, which is usually starting with a provisional patent application. It's correct that you don't have enforceable patent rights until your non-provisional application issues as a patent, but that's not necessary to start selling a product. The best strategy is to file a provisional patent application just before you start making public disclosures, public uses or offers for sale, which would otherwise start forfeiting patent rights.

[@youngreno100]

Bro you just made it look like why bother

[@youngreno100]

And the average person don't understand the process. This just sounds like it'll take a lifetime for anything to even get look3d at. Just sitting on product. This was discouraging lol

[@neelsvisser-gw5fn]

I was looking to file a patent for something else but I’m not sure if it’s eligible for a patent. Let’s say kirigami paper art, but instead of paper, another material is used. For example, tiles for your bathroom that use thin sheets of tile to create this art. I don’t know what the utility would be other than it looks good. No specific design. Just a different application for kirigami.

[@PatentsDemystified]

It’s not possible to determine this without getting into the specifics. I would suggest talking with a patent attorney about what you have in mind. A list of patent attorneys can be found here: oedci.uspto.gov/OEDCI/practitionerSearchEntry

[@xiolana]

Perhaps a design patent

[@stuartfox5989]

It may be possible to patent a new and unexpected use for something that is known, while the combination of known things may be a 'different' situation.

[@inventingman1]

Then why do they allow you to put " Patent Pending" on something that you have only filed a PPA on?

[@PatentsDemystified]

It’s in the term “patent pending” itself. The definition of “Pending” is “awaiting”. So “patent pending” literally means awaiting a patent. In other words, you don’t have a patent yet, but have filed an application to try to get a patent.

[@NewHeightsDanceMinistry]

Does filing the application give you the ability to reach out to investors or should I wait until the non-provisional is filed?

[@PatentsDemystified]

Yes! You should plan to reach out to investors shortly after filing your provisional patent application. Definitely don't wait until you file a non-provisional or until you have an issued patent. This video has more details on the best strategy for when to file and what you can do afterwards: kzbin.info/www/bejne/sHTFdq1pdrCJpac

[@33samogo]

Is there a way to laying PPA open for freedom to operate, without climeing priority in non-PPA?

[@PatentsDemystified]

No, PPAs are never published aside from being accessible via a publicly available non-provisional file wrapper. If you want to create prior art that will prevent someone else from patenting the same thing, or something similar, the best thing to do is to file the non-provisional and let it publish. Patent examiners are most likely to find and use published applications and patents as prior art.

[@33samogo]

@@PatentsDemystified OK, thank you!

[@thomaspugh5265]

Is your product protected the whole process or when that provisional patent application expires someone can steal your idea?

[@PatentsDemystified]

When you file a provisional application, it establishes a priority date for whatever is described in the provisional application. You need to file a non-provisional that claims priority to the provisional within the year that the provisional application is pending; otherwise, you lose the priority date of the provisional. The priority dates established by the provisional and non-provisional are maintained unless the non-provisional application goes abandoned. I wouldn't necessarily say that someone can "steal" your idea if the provisional expires without filing a non-provisional or if the non-provisional goes abandoned. It depends on whether you've made public disclosures, public uses or offers for sale of the technology that would forfeit patent rights or if the non-provisional has published, which would also be a public disclosure. Depending on if/when these things occurred, the technology may have become public domain and anyone is free to use it.

[@33samogo]

Can PPA be used as reference for non US patent applications or is just valid for US non-provisional patent aplication?

[@PatentsDemystified]

Yes! A PCT and foreign patent applications can claim priority to a provisional application in addition to a US non provisional. I do this all the time and is one of the many benefits of starting with a provisional.

[@33samogo]

@@PatentsDemystified Prefect, I have one more question, PPA can be upgraded, is a good practice to keep PPA hidden upgrading it every 12 months and how many times you can repeat this upgrading? Thank you!

[@PatentsDemystified]

No, that’s not how PPAs work. They always expire after 12 months and you need to file a non-provisional claiming priority to the PPA to get the benefit of its early priority date. You can refill a PPA, but lose the important early priority date so it’s typically not a great strategy except in rare specific situations. Usually people re-file PPAs and unknowingly forfeit patent rights.

[@33samogo]

@@PatentsDemystified OK, I misunderstood “rolling provisional patent applications”, it would be too nice for inventor to have priority date protection on PPA extension, but probably to harmful for the system on other hand. Thank you!

[@PatentsDemystified]

Yea, it would be great if we could just keep on extending provisionals. That would be awesome. Thanks for the great questions!

[@redfridaytalks]

Bravo!