Inside Small Business | March 3rd, 2008
Russell Williams, President of Invention-Home
This is part two of a two part series
The reason that so many inventors use the provisional patent application process is that it is significantly less expensive and complicated than the utility application. It allows the inventor to use the term “patent pending” while further developing or marketing their invention. For example, if your invention changes through your own development efforts or must be changed for manufacturing reasons, these changes can be incorporated into the final utility patent application when ready to be filed. In general, applications cannot be changed after filing. In addition, the one-year time frame can provide the time needed to market the invention to companies and to get a feel for the true market demand for the invention. It’s not unheard of for an inventor to decide not to file a utility patent application after they market their invention if they receive feedback that convinces them that their idea is not as good as they originally thought.
Another possible advantage of filing the provisional patent would be if you could succeed in finding a good product company or manufacturer during the 12-month period to license your invention and agree to pay up-front money to cover the costs of filing the non-provisional patent application.
For some, such as inventor Scott Carlson, the provisional patent application has become the way to go.
“I have been developing products for 7 years,” Carlson said, “And now that I have filed 8 patents, I always go with the provisional because it’s less expensive and it gives me a year to explore market avenues in order to see if the product has any merit.”
For others further down the road in the process—those whose inventions are further developed or those whose market research yielded positive response—the route of a utility patent may be a more viable option.
After choosing the patenting option that best fits their circumstances, many inventors wonder whether it’s a good idea to file their own patent application rather than hiring a professional. The answer to this question depends on which application is being filed. The provisional application process is not as complicated as the non-provisional application, therefore, inventors may be able to file a reasonably good application if they take the time to adequately research and understand the process. However, don’t assume that just because the provisional patent application is less expensive and complicated that the importance of the quality of the application content is also decreased. It is essential to take the time to thoroughly and accurately complete the application as it applies to your invention.
When it comes to the non-provisional patent application, it is probably not wise to file your own application. Although there are many good books on the topic, the entire process is not as easy as it seems, and even with a good patent filing book as your guide, more than likely you will struggle to capture the optimal language in the claims section of the application, which defines the overall quality of your patent. Therefore, it is probably in your best interest to rely on the expertise and experience of a registered patent attorney. A good patent attorney should understand how to accurately capture your invention through the claims section of the application and produce a much stronger patent for you in the long run.
Whichever direction you ultimately decide, remember that research and self-education are invaluable to your success not only at this beginning stage, but also as you progress in the process of inventing.
Russell Williams is President and Co-founder of Invention Home a company creating the first nationally recognized marketplace for connecting inventors with companies looking for innovative, new inventions available for license (www.inventionhome.com). He holds a Masters in Management degree from Carnegie Mellon University and a Bachelor of Science degree from West Virginia University. His educational articles can also be found on www.startupnation.com and www.inventorsdigest.com.
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on Monday, March 3rd, 2008 at 8:52 am and is filed under Business, Entrepreneurship.
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