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July 31, 2023
John Rizvi, Esq.

Provisional Patent vs A Non Provisional Patent | Learn The Difference Between The Two Applications

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Let's go with the questions we have today. Perfect.

Yes, great presentation. Fear is definitely something does hold a lot of people back from moving forward with their ideas or their inventions. And it is unfortunate. But I like the quote, whether you think you can or you can't. You're right.

That's true. So,

so we're gonna start on the questions for John to answer. You guys still have time. There's the q&a down on the bottom, just click on that you can enter your questions, and we'll get to them if time permits. So I'm going to start with the first question. First question is Can questions related to previous questions not related to provisional versus non provisional be asked at this q&a First and foremost?

Yes, they can. And however, because this, we have had a general q&a, and that was last Friday, where it was pretty much open season for any questions. Today was earmarked specifically for provisional patents versus non provisional. So let's start with those. And then we'll hit other questions later on. Jenny, if you can, if I know she's one of the panelists on this call, if you can post the URL for the inventors mastermind in the chat box, that's my private Facebook group. There's no cost to join. And any questions you have, if you want to post them in the inventors mastermind, I'm gonna go ahead and answer every single question we don't get to during this webinar, I will take the time and address it in the inventors mastermind. So there it is, I see Jenny just posted it. You don't really need the URL. If you go to Facebook, and you type in under groups, look for the inventors mastermind, and you'll find my private Facebook group. So let's go with the next question.

Perfect. So the question and answers don't end here. So if you don't have your questions answered here, you can always go to our inventors mastermind, and post it there, nothing and networking with like minded individuals, inventors, entrepreneurs, so and so forth. So the next question is from James, when an idea or an invention has a pending application, what precautions can be taken to ensure the public disclosure is avoided during the process of establishing patent rights? And is a provisional patent advisable in that circumstance?

Yeah, so I, like let me do this. I think it's a it's a really good question. And the question is, is a provisional patent advisable in that circumstance, what I would like to do is a lot of the people joining today and we have over 100 people on on line, some of them may not know what a provisional patent is, or and what a non provisional patent is, I wish the patent office would use terms like temporary patent and final pattern, because that's intuitive. The provisional patent you can think of as a temporary patent that protects you for one year, the non provisional is your final patent, and that it protects you for 20 years. So that I'd start with that premise. But also I have as the patent professor, but part of when I teach and I've been an adjunct professor for for 20 years, I have to get difficult concepts of patenting and get them across to third year law students who are kind of like seniors in high school at that point, you have to really get, you have to really make things understandable, because they're not putting in the time in the effort to really attack the material. So I put together a lot of videos that didn't address difficult topics of on patents, I'd like to share one that has to do with the difference between a provisional and the non provisional patent. And that's basically what what what are they what are the differences between them. So let me share my screen and then if the listeners listening, they'll they'll be able to see what the differences are. Hi, I'm John Rizvi, the patent professor, have created a short video to help explain the difference between a provisional and a non provisional patent application. The big difference is that a provisional patent does not have claims. What are claims, claims are the numbered paragraphs at the end of a patent that tell others where rights to your idea and and their rights began. As such, a patents claims are similar to a home's title. Your neighbor knows where to put up their fence because the title document tells them where the property line is. Well, patents are property too. And the claims tell companies how close they can make their product to yours without violating your rights. Until 1995 All patents had to have claims submitted with the application. Writing up these numbered paragraphs were an extremely difficult and time consuming task for patent attorneys at a huge expense for inventors, about 40% of the costs of a patent come from the claims. In 1995, the patent office permitted a new type of patent that could be filed without claims. They call this a provisional patent. The word provisional means temporary. So you are given a temporary grace period of one year to send in your claims. During the year, you can openly discuss your idea with anyone, you could sell your idea, license your idea, and even make changes to the design. Provisional patents are perfect for inventors without a finished product. As you can see, provisional patents give a lot of flexibility to inventors. When you work with me, everything you pay for a provisional patent is credited towards your final patent. It does not cost you anything extra to go this route. Now there are a lot of fraudulent companies jumping on the provisional patent bandwagon. So be careful. The provisional patent is a good option, but only if it's done right. Okay, so there's the claims are what makes the non provisional patent different than a provisional. So this question or asks, if you if you can repeat it for our listeners again, but he ends with what is a provisional patent.

So while yes, what is a provisional patent? James, I wanted to know when an idea or an invention has a pending application, what precautions can be taken to ensure the public disclosure is avoided during the process of establishing patent rights and is provisional patent. advisable in that circumstance? Yeah,

so that is a better perfect circumstance for a provisional patent. Because a lot of times you might want as an inventor, you want to work on your prototype, you want to fine tune the idea, you may want to speak to others in the industry to get suggestions, you may want to get cost estimates to see if the idea is even feasible. What precautions can be taken to avoid just somebody filing first, go the best precaution is to get your provisional patent in as soon as possible. Don't get cost estimates. Don't speak to prototype manufacturers. Don't discuss your idea with anyone until you have that secure filing date with a provisional patent. Now, when I talk about in that video of fraudulent companies are one risk, because nobody at the patent office reviews, provisional patents, it's basically a placeholder that is that keeps your position until you file the final patent. But the risk is that anybody that files in between your provisional and your non provisional, if your provisional is not adequate, you lose rights to it, and somebody else will go in, they'll get superior rights to your idea. So that's to answer that question. That's what you do. That's the file the provisional patent immediately prior to any disclosure.

Let's now go rob would like to know, he understands that it's not mandatory to include claims or embodiments or all the embodiments and then in the provisional patent application, but he would like to know the minimum information which must be included in the PPA to prevent any invalidity issues when the NPPA is fine. Okay.

So the the, here's the thing, the provisional patent does not have to have claims. He's absolutely right. But the minimum information under the statute, a provisional patent has to meet the requirements of 35 USC 112. So that means it has to be fully enabling to somebody skilled in the art so that they could make and use the invention. What a lot of times goes wrong is people will slap together, self filed provisional patent and not pay particular attention to whether it's fully detailed. And whether it discloses everything, or even. Even worse is there are companies out there because no one reviews provisional patents, that are marketing companies that will offer to file provisional patents and extremely cut rate fees, but you think you're protected. And you won't be because the provisional patent, you can think of it like filing a patent. You can think of it as yelling bingo at a bingo game. They don't just hand over the award to the first person that rings that that raises their hand and yells bingo. They asked you to bring your card up front, and then they verify that your chips actually line up where they're supposed to line up. And that's what happens with a provisional Patent if you file, you're essentially yelling bingo saying, Hey, I've invented this first. They're not going to award the patent to you until they do a search and they look to see if anyone else is ahead when you file the non provisional, but that's when it has to meet the oldest critical standards. And I want to share a quick video that talks about like kind of really makes it clear what the risks are of not filing it properly. So let me bring bring that one up

professor, one way to think about provisional patents is to think of them as a parachute. Imagine that you are a skydiver. You want your parachute professionally packed by an expert so that it opens when you need it. If you pack your own parachute and pack it wrong, nobody's going to know until you jump out of a plane and it doesn't open. That's why skydivers hire an expert to pack their own parachute or they become one themselves. Provisional patents are the same way. Nobody at the patent office reviews a provisional patent to see if it's done correctly. Instead, when the patent office receives a provisional patent, a clerk Simply Stamps it patent pending, and issues you a tracking number. Without having ever read the application. You can send in your three year old toddlers crayon drawing and a crooked the patent office was accepted as a provisional patent. That is because the provisional patent is nothing but a placeholder that says your place in line at the patent office for 12 months until a regular non provisional patent can be filed. The only time a provisional patent is reviewed, is when the question comes up of who invented first, the same tough requirements are in place for a provisional patent that are in place for a regular patent. That means if your provisional patent is found to be faulty, you lose your filing date and the patent gets awarded to someone else, even if they filed after you. In this way. A sloppily written provisional patent is like a parachute that doesn't open with the parachute, you don't know it won't open until you need it to open. The same is true with a provisional patent that's not done by a patent attorney, like a parachute that won't open when you need it. A provisional patent that does not count is completely worthless. And a little money you save by hiring a low cost document preparation company to prepare the patent application or by doing it yourself is not worth losing your invention over most provisional patent scams make you sign a fine print waiver that says they're not responsible for the quality of your provisional patent. Because they are basing it only on what you provide it to them. Garbage in is garbage out. At my law firm, I guarantee you can count on your provisional patent to protect your rights. And everything you pay for the provisional patent at my firm is credited towards the full patent. So following this route with us does not cost you anything extra I want it done right. Call me the patent professor. Okay, so that's explains the risk of a provisional, it's very tempting to test the market and file something while you're testing the market before you put a heavy amount of funds into protection. The problem is that it's it's a risk. And if your idea has merit, then somebody's going to trump your rights. By filing. First, there's large companies that would evaluate provisional patents, they're going to ask you for a copy before they purchase rights from you, they're going to want to see do their due diligence, just like you wouldn't buy a home before you hire a home inspector and the bank wants to protect their their collateral. So the bank also wants to have an inspector confirm the home's condition. Well, anybody interested in purchasing your rights to an idea is going to ask for a copy of your application and review it. And when they do that, and they don't see that it's fully enabling it doesn't meet these requirements of 35 USC 112, then your patent is worthless. And if you've already disclosed it, then in 2013 the laws switch to a first to file somebody else can file first and own rights. Wow.

That's crazy. So don't even wood has a question she would like to know. If provisional patent goes over the 12 months, does the patent pending protection go away? Or what happens?

Yes, so that's a great question. The provisional patent is temporary protection for exactly one year after you file. So if you file on January 12 2020, your provisional is good until January 12 2021. If you have to file the non provisional before that one year time period, or you've lost all rights to the idea, it's your app, you don't have any rights. So what can be done, you have to file a non provisional before the end of the year, if it goes 12 months in one day, you've waited too long.

Now, Thomas would like to know, what are the problems with a provisional patent application when trying to sell your patent pending?

Provisional patents are bought and sold all the time. So there is no restriction. There's nothing that says you can't sell an idea. While it's only pending with a provisional, some of the problems of major problem have gone over already, is that nobody's going to buy the rights to your idea without reading the provisional asking for a copy. And bringing a copy of it to an attorney to evaluate how well the provisional is done. The same way that you wouldn't buy a house without inspecting the home to get an idea for its condition or hiring an inspector, a home inspector, nobody's going to pay for an idea without inspecting the patent. typically larger companies, they have the funding to hire a patent attorney, to see if there's a way to design around and basically steal your idea and not buy it from you. And if the provisional patent is not done correctly, then they have they, you're basically handing your idea over to them on a silver platter. And you're you're giving them the details of what you filed, their attorney would advise them that, hey, this is not meeting the standards of that are required, let us file a full application that does meet the standards, and then you'll be the first inventor. So that's the risk. That's why there's so much at stake. Which is why instead of just having today's session as a normal q&a, which I usually have, I really want to focus on on these risks.

All right, well, I got a rapid fire question for you. John. Are you ready?

Yeah. What's what's rapid fire?

All right, perfect. Well, I'm gonna ask you a few questions real quick. And I need you to answer them. Number one, do you have a flat fee for both provisional and non provisional patents?

Yeah, applications? Yes. Like be for both?

What are the fees for both?

So I mean, it's always a flat fee. But it depends on the complexity of the idea. So obviously, if somebody has a simple asleep for a cup of coffee, that's going to be easier for me to describe how it works, then spherical Rubik's Cube, for example. But before you start, unlike a lot of law firms that charge hourly fees, and you never know what the total is going to be, and you're charged for every phone call, every email, every letter, every meeting at my firm, I've been practicing for independent for almost 25 years. So once I know the complexity of your idea, and how crowded the field is, I have flat fees for both. And sorry about that. You said rapid fire. Yes.

Great answer, but I'm not 100% sure you're familiar with what rapid fire me? It's not a problem whatsoever. Right. Now, the next question is I have a mobile app for a patent, but I don't have the code, nor the expertise can that's will that stop me from filing an application?

No, no, you can protect software, and you can protect apps. But what you're protecting is the concept, not the actual code. So you don't have to have that done. To keep this rapidfire I really can't address it in detail. But next Friday, and before the end of this webinar, you can go over the dates. Next Friday's topic is specifically how to protect software and how to protect apps. And it's next Friday at noon, we'll have a zoom webinar specifically on that topic. So let's go to the

next question is I have an app developer who outsources their outsources to India for code. This has me concerned that my IP may be stolen or compromised even with an NDA. Is this a valid concern?

It's absolutely a valid concern. Their idea not only can be stolen, it's very likely to be stolen. If they disclose it. Remember, you don't need the code in order to protect the idea. So to get the concept protected with a provisional patent, and then you have 12 months to work on the code. Next question.

Are there any programs or grants for students with an invention or idea who have limited funds?

Yes, well, the what what I'm aware of the patent office does have a pro bono patent program, and they have different requirements, but certainly, if I think that would be a factor if they put into that application, they would be considered.

Now I have been trying to put my invention in The market, something really important. I travel all over the US for 22 years, 20 years because of my job and my product is not in the market. I'm working on this with an invention company but not a firm. Is that a good idea?

I would do searches for this specific company. Because 99% of invention promotion firms or invention marketing companies are fraudulent, and they're scams. So I can't say, you know, I wholly think it's almost 100%. But I may be a legitimate invention promotion firm out there. But I would absolutely urge him to do all of his research or her all of the research in advance in the patent office, in fact, has a brochure and a checklist of what to look for. And, Jenny, if you're on this panel, still, if you can take that checklist, and post it on the inventors mastermind, the private Facebook group, anybody that's considering working with a company that's not a licensed by the patent office, can look at this checklist put out by the patent office themselves. So we'll have that on the inventors mastermind. If not today, certainly over this weekend.

Perfect. Now, ideally would like to know, do I need a prototype a provisional or a non provisional patent application?

Yeah, beautiful question. You don't need a prototype at all, in order to protect your rights. Know that nothing at all. Like it's until 2013, the US was on a first to invent system. And that meant that if you don't file your patent first, as long as you have documented your and have evidence of your invention date, you can take your time to create a prototype and file in 2013. This was the single biggest change in US patent law in this century, we've gone from a first to invent system to a first a file system. And what that means is today, it doesn't matter. If you invent first, if you don't get that application in, you will lose out to somebody else. So don't spend time working on a prototype, because that time could end up costing you your patent. But even equally important is that prototypes are not are not cheap, you may put three four or $5,000 into molds for your prototype, into a 3d printing into engineering into design drawings, and only to find out that somebody else already owns the idea. And you can't, you can't protect it at that point. Right. And not only can you not protect it, you can't sell your product, because someone has the patent already. So the first thing I would do with a new idea is file for is asked for, get a patent search done to make sure that the idea is unique.

Search is very important. Now Bernie would like to know what is a pause, pan? Does that qualify as a PPA or an NPPA?

So I didn't hear the first part of it. What is a what patent poor man's patent? Yeah. Yet a poor man's patent does not qualify as anything. It's not a DA. And it's not an NPPA years ago, when before 2013 when the law was first to invent, what people would do is they would they would mail, they would write down their idea, draw sketches, put it into an envelope, sometimes sign the envelope on the seal, and then mail it to themselves. And they would use this as to try to prove that it's evidence of the date that they had their idea because they'd have a stamp date from the post office. And they could prove the day that this envelope was sealed. After 2013 The law is no longer first to invent in the United States. It's first to file so nobody cares what date you came up with your invention. What's critical is What date did you get your filing in at the patent office. So the poor man's patent it never was really a really good way to protect what you have. By today it gives you like zero protection.

Now what happens to this is from an anonymous attendee, what happens to a patent if the person passes away?

So a patent is a good question. A patent is no different than any other type of property that your car your house, your boat stocks, so your patents can if you list the patent in your will, then it can be inherited just like any other property patents can be bought and sold as well. So if you die and you're in you have a patent, the patent is going to go to your either through your will to whoever you identify, or it's going to pass under the default rules in your state to your chair All right, and you and your spouse

Perfect. All right now we're going to dwell, delve into some questions outside of the PPA versus NPPA. Sphere, should you obtain a trademark at the same time you obtain or file for a patent?

Yes, so the different there's differences between trademarks and patents. So trademarks protect the brand. And even though my my nickname is the patent professor, I do just as many trademark applications as patents, I think that patent and trademark professor is just too much of a mouthful. So I'm the patent professor, but I do trademarks. In my view, that trademark is important, but not, but if you have to choose between the two, I will protect the underlying idea. Because if you protect the idea, nobody can can compete with you, no matter what they call their their compact, competing product. But if all you do is protect the name, a large company with the marketing funds can jump ahead of you and start competing, and they will be able to get around your rights.

Terry would like to know, can you only invent a product? Or can you invent a service as well?

Yeah, so it's a good question. So patents can protect a physical components, physical products, like like, like a Rubik's Cube, for example. But they can also protect methods. So if you have a service, and it involves a particular method, say you have a method of cleaning sidewalks, that's fairly unique, you've got a unique series of steps, you can patent that, and then that would protect you as well. Now, if your method also involves a unique chemical composition, you can get two patents one patent protecting the chemical composition, and one a separate one protecting the specific method using any chemical composition. So yeah, the answer, the short answer to that is absolutely don't don't not pursue a patent. Because you think it's a service instead of a product software is a service in many instances, and you can protect software with a patent.

Now, Amani would like to know, can you should you claim every potential version of the invention?

Yeah, so what a good patent attorney does is when I draft a patent, I'm trying to look at what it is that the inventor is trying to protect. And I don't tie it to a specific version, because then the patent is not as valuable. So as an example, if, if your idea is a chair that has magnets in the seat portion, say for pain relief, in the magnets are supposed to help. When I draft that application, it would be a disservice to the inventor, if when I write it, I write that the magnets are in a chair, because and I say for example, it has four legs, because it could be a three legged barstool that a competitor creates. And if I put four legs into my claims, then that's not going to cover this competing product. So what a good patent attorney will do is instead of saying that the chair has four legs are three legs, they would say that it has at least one leg, and then all the variations are covered. But even better. Why even say it's a chair in the first place? Like what if somebody takes magnets and puts them into a bench or a tree stump or a mattress? So why not say that it's a flat surface for supporting a human body? And that includes magnets, that would be the best way so that as far as the question, should you include every single embodiment, you absolutely should work with an attorney to try to get as broad protection as possible, so that competitors can't make small changes and get around your rights.

Okay, and Deborah would like to know, do I need a patent if all I'm doing is modifying and

most patents are modifications of existing products. So you absolutely need a patent. If you take something that already exists, and you improve upon it, you you're entitled to a separate patent, where's the rare patent, that's just they call it a pioneering invention that's so new that there's nothing like it that exists. But in most instances, you want to get protection for improvements on existing products. That's where the the 9090 to 95% of all patents are improvements over something that already is out there.

Now we are running out of time. So we have just about five minutes left. I'm just going to add two more questions. So if you have any last questions, put them down now. And we'll get going. Now, John, I have a concept from 2010 that I've never done had to complete. I started the search, and I have the results. Do I have to start all over now to resubmit the concept for a search? Or can I just use the search results I have now.

So here's the thing. First of all, if you have publicly disclosed that idea, you cannot file for a patent. There's a one year time limit, you must file within one year. So if your idea was in 2010, hopefully you haven't publicly disclosed it. Now. If you have not publicly disclosed it, you can still protect it. But your search results are so stale, that they're not no longer going to be reflective of whether currently, somebody has already come up with the idea. It's like if you get a cancer screening in 2010, that doesn't mean you don't have cancer today, you need to have a test again. So if the search is that old, I would advise doing the search again, or at least updating it, most patent attorneys will give you a discount, you're not going to pay the full fees to update an older search. That way, if somebody else has filed in the last 10 years, you can save all of the money that you would put into your patent or put into your prototype. Because you'll find out before you file that the ideas might have been new in 2010. But it's no longer new today.

John, we're running out of our time. Next week, next Friday. That's May 15. We have our next seminar, make sure you tune in for the next installment of Ask the patent Professor John, what's our topic?

The topic is software patents and apps. How can you protect software patents or apps? Should you file a copyright? Should you file a patent? What do you trademark with that in that regard? So that's a better topic for next Friday. So if you're able to attend, please go ahead and attend. Go ahead and register. Also, there's just so many questions that were pending. I know Giovanni had two more he wasn't able to get to them. But we will go to the Facebook group. Put your question in, and I'll be able to make sure we answer every single one. If you'd like a consultation, call my office I don't charge for the initial consultation. We'll go over your idea and let you know whether it's patentable subject matter. And that's, that's all we have for for today.

PPTV. I'm Giovanni the passionate paralegal and this is geo This is John Rizvi,

professor himself. Thank you guys, and thank you for attending. See you next week.

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