It is not uncommon in startup circles to hear people say that they have a “provisional patent” or that they have protection from someone stealing their invention because they filed a provisional patent application. Neither of these statements can be true because there is no such thing as a provisional patent. While the people making those claims are normally well intentioned, failing to be familiar with the basics of patent law can result in an entrepreneur inadvertently surrendering the patent rights for which they have an invention. If this happens, it can cripple a firm, particularly an entrepreneurial venture, that wants to establish a sustainable competitive advantage via its exclusive rights on an invention. Here is an accurate assessment of what takes place for entrepreneurs working in the United States. What is filed with the USPTO is a “provisional patent application.” It includes specifications (i.e., a description and drawings of an invention) but does not require formal patent claims, inventors’ oaths or declarations, or any information disclosure statement. It is not assigned to a patent examiner, and no judgment is made regarding prior art or the patentability of the invention. Its purpose, in the eyes of the USPTO, is to establish an early filing date for a full utility patent that a person will file later. What this means is that if a person files a provisional patent application on July 1, 2024, and the application is completed correctly, this becomes the “priority” filing date for that invention. If someone files a utility patent application for an identical invention a month later, that person is out of luck, as long as the inventor who filed the provisional patent application follows through and files for a full utility patent within one year and both the provisional patent application and the full utility patent application are found acceptable. A bonus attached to filing a provisional patent application, which costs $199 to file, is that the inventor can legally use the term “patent pending” in relation to the invention. This designation may provide the inventor a significant marketing advantage, if the invention is already for sale, and signal to prospective inventors that the inventor is taking steps to protect their patent rights......

Discussion Questions:

1. Briefly describe the difference between a provisional patent application and a utility patent application. If successful, which of the two applications awards a patent to an inventor?
2. Can a person file a provisional patent application for a design patent? Document your research to answer this question correctly.
3. Under what circumstances would you suggest to an inventor that they

(a) could file a provisional patent application without a patent attorney or

(b) need to hire a patent attorney to file the provisional patent application?
4. Spend some time studying the USPTO’s website or doing some Internet research on patents. Inventor’s Digest (www.inventorsdigest.com) is another good resource for learning about patents. Discuss one fact about patents or the application process you find interesting and that does not appear in this chapter.