Does a provisional patent application allow us to present our tech publicly?

質問

For example, could we present the technology in pitches to investors? What is an investor's take on a provisional patent application?

回答: 4 公開 & 1 非公開

6ae6ecfd59
弁理士

I endorse Steven's response, but an additional item to remember may be that a publication during the priority year may damage a patent if your priority claim appears to be invalid. This can easily happen if the wording in your application changes and/or if your invention has been developing further in the priority year and you want to include the new features.

Steven weinrieb
弁理士

Yes, a provisional patent application effectively provides you with "provisional protection" from someone stealing your invention because once you have filed your provisional application, you immediately have the earliest filing date for that invention which you may subsequently disclose to third parties - in other words, if the third party or parties filed a patent application with respect to your idea, under the new AIA, which converted the US patent system from a first-to-invent to a first-to-file system, your earlier filed provisional application would have an earlier filing date, and therefore senior rights, than the later-filed third party application. Your application could effectively be used as prior art to prevent the third party from obtaining a patent. Note however that a provisional application will in and of itself never lead to a patent and patent protection in view of the fact that a provisional patent application is never examined - you will need to convert the provisional application to a non-provisional or PCT application within one year of filing your provisional application. As for investor's "take" or "rights" to the patent application and any subsequently obtained patent, that is within the realm of whatever you and inventor agree upon in view of his investment.

As further remarks in connection with the point noted by Bart, note that ideally a provisional patent application should be as complete, accurate, and thorough as a non-provisional application just to avoid the point noted by Bart. For priority to be valid, whatever is disclosed within your later-filed non-provisional or PCT application, should be in your provisional application such that the provisional application can in fact provide priority for the later-filed non-provisional or PCT application. If further developments are in fact developed, then the appropriate procedure would be to file another provisional application incorporating in it everything that was in the first provisional application and then adding the new development - in this manner, nothing ever gets "lost" or "forgotten" and again, your priority will be fully protected. Just note further that your non-provisional or PCT application needs to be filed within one year from the filing of the first provisional application.

407362b526
弁理士

I generally agree with Steven and Bart.

This means in simple terms:

As Steven points out, a US provisional patent application is a cheap and simple instrument that allows you to present publicly while retaining the option of patent protection for a maximum period of one year.

As Bart points out, in practice, there are almost always also certain risks associated with the 'simple' and 'cheap' nature of US provisional patents.

An investor handling IP assessment professionally will at least do a limited due diligence exercise on your provisional patent application, which will certainly reveal some of these risks, as in practice, when US provisional patents are considered for budgetary reasons, chances are high you have cut some corners. Such an investor will however also take into consideration whether such a provisional patent application was a tool best fit for purpose, taking into account for example the budgetary context, product development phase, etc.

Adli photo
弁理士

A Saavy investor will know that a Provisional Patent Application (PPA) is easier/cheaper to file, does not get examined, and must be converted to a Utility patent within 12 months...thus a PPA is less impressive that having filed a utility patent. While the PPA gives you some security in the sense that you have your priority date, you should always file the utility patent asap if you have the means because it will provide somewhat more of a deterrent effect and security (depending on how thorough the PPA is).

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