As a leading patent brokerage firm that enjoys and excellent reputation and a high profile, we are contacted on a regular basis by an inventor claiming to have a “patent” – only to discover after several emails that this inventor actually just has a patent application Advice for First-Time Inventors. In some cases, they have a patent application that they are about to file!
A patent application is NOT a “patent” any more than college application is a college degree! These inventors are not serving themselves well by contacting a patent broker – any patent broker – and commencing the relationship with a bold misstatement on the part of the prospective client! Starting out stating exactly what you have to offer will lead to a much better broker-client relationship down the road.
Every inventor – especially a first-time inventor – has two critical choices to make when he or she files a patent application with the U.S. Patent and Trademark Office (USPTO) – file a Provisional Patent Application or file a Non-Provisional Patent Application. There is one choice that most definitely serves the needs of a business that will practice the patent, and one choice that serves the needs of the independent inventor who will be seeking to sell or license his or her patented invention. An inventor will save time, money, and a ton of aggravation by making the smart decision at this point in the patent application process.
Let’s first look at the U.S. patent application pool. About 75% of all U.S. Patent Applications are filed by businesses, and the Provisional Patent Application was designed for those applicants. A Provisional Patent Application is not published by the Patent Office for 18 months, and that gives a business the opportunity to establish an early Priority Date for the application, fine tune the invention, do some design and engineering work on a product based on the patent, test market the concept, and maybe even get a product to market before the actual patent is granted. The applicant company can then mark that product “Patent Pending” to let its competitors know that the technology behind the new product is covered by patent application. However – and this is a critical factor – a Provisional Patent Application is of NO value to the inventor who hopes to monetize his or her invention! And…it creates an extra step in the patent application process and burns up valuable time.
We cannot tell you how many inventors come to us with a Provisional Patent Application and expect us to take it to market. While that is not exactly impossible, it is most certainly NOT practical. Every prospective buyer and licensee would need to sign a Non-Disclosure Agreement (NDA), and if you have a half-dozen companies signing an NDA, and your patent is leaked, whom do you go after for breaching the NDA? Also, many companies will simply NOT enter into an NDA these days as the want to limit their down-the-road liabilities in an increasingly more litigious business environment.
A prospective patent buyer or licensee wants to see what he or she is buying or licensing. Signing an NDA and getting a Word file back is not very satisfying. A prospective patent buyer or licensee wants to be sent to the U.S. Patent and Trademark Office website – or one of the private websites that list patents such as Google Patents or Justia – and see the actual filing. They want to see the abstract, the claims, the figures, the Prior Art and Forward Citations, and the narrative. Only a published patent application that has been posted to a website will show the Application Date and Priority Date of the patent – and these can be critical elements in the patent-buying or patent-licensing decision. Trying to sell or license a patent without the ability to provide this comprehensive data from a reliable third-party source is simply not a practical undertaking – especially when any patent application can be published simply by the inventor requesting so! And, in the process, eliminating the need for a messy and complicated NDA.
The smart option for the independent inventor who is not going to build a factory and manufacture products based on his or her patent is to file for a Non-Provisional Patent Application since a Provisional Patent Application offers no significant benefits to the independent inventor who wants to monetize his or her patent. File a Non-Provisional Patent Application and then ask the USPTO to publish it immediately!
An inventor is always, always, always best served by filing a Non-Provisional Patent Application and then requesting that the patent application be published immediately!
Prospective buyers and licensees want to see the complete patent filing, and you simply cannot do that with a Provisional Patent Application. Once your Non-Provisional Patent Application is published, your broker can send prospective buyers and licensees to the USPTO website, Google Patents, or Justia where they can see the Abstract, Claims, figures, narrative, citations, and priority and filing dates.
Many patent attorneys do what we believe is a mistake by suggesting a Provisional Patent Application to first-time inventors, but that is because the patent attorney’s job is to get the patent granted, not monetize the patent. It is always in the best interests of the inventor to file a Non-Provisional Patent Application … and … request that the USPTO publish it immediately!
What do you do if you are an inventor with a Provisional Patent Application sitting at the Patent Office collecting digital dust?
1. Immediately convert it to a Non-Provisional Patent Application – even if doing so is against the advice of your patent attorney.
2. Request that the USPTO publish your Non-Provisional Patent Application. This is done via filling out and submitting a one-page form.
3. Once your patent application is published, contact a patent broker about monetizing the patent.
Alec Schibanoff is Vice President of IPOfferings LLC, a leading patent brokerage firm. In addition to patent brokerage, IPOfferings publishes the IP MarketPlace newsletter, and offers patent valuation and IP consulting services and has an extensive list of patents for sale at its website.
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