Excerpted from SEAK’s course, “How to Become a Successful Physician Inventor”
I’m at an Angel [SP] meeting. I’m hearing about a company. They’re technology. I raise my hand. Do you have any barriers to entry? We’re provisionally patented and as you’ll learn, that’s not a correct statement and it’s just flat wrong. A provisional patent, it’s just an application, a placeholder. What happens is in the normal course of events, we’ve been talking about you. You might do a search, you might not do a search. You file a patent application. Let’s call it a regular patent application. You file in the patent office. You wait a couple years. The patent office does their search. They examine it. They get back to you. They reject you. You go back and forth a few times, hopefully not too many times, and you get your patent. You’re happy. Hurray.
Sometimes, you’re not ready and I’ll talk about some of the reasons. Then, you say, “I don’t wanna go through, start that whole process. It’s a little scary. It’s expensive. We’re not quite ready.” So, we file a provisional patent application, which just says, “If you file this regular patent application within one year of your provisional date, we’ll give you an effective filing date of your regular application, the one year earlier date of your provisional.” Does that make sense?
So, there’s a little bit of a catch, of course. You can’t just write, so as people say, “This is great. I’m gonna have my chair patent and I’m just gonna write one word, chair. And then, a year later, I’m gonna write, “Oh, the chair is blown. It has four legs.” No, no, no. It’s only covered, your one year later date only goes back to the provisional date based upon whatever’s already disclosed in the provisional, the overlapping subject matter. If you come up with something new in a year, whether it’s blue or it has legs and there’s metal, none of that gets the old date. And that’s a big issue, but we’ll talk about that.
So, again, you know, first question. Would you like to protect your invention? And are you ready? If you’re ready, and I’ll talk about what makes you ready, then you just, why wait? Get a regular patent application. In fact, sometimes we accelerate examination at the patent offices, a new process, where they’ll let you get an examination within one year, which seems long but it’s actually pretty fast. If you’re not sure, then let’s talk about the next slides.
First refresher. To protect your invention, you need to get a patent, yes. Time consuming, it’s expensive. You’re gonna spend X to file and then probably another X to 2X to get it through the patent office and issue. So, that’s gonna be expensive. So, there are some issues that if, say, for a startup or an inventor, you’re thinking about getting a patent, you’re not ready, are you cash constrained? That application’s expensive. Like I said, they could be $10,000 to $20,000 easily. Is the technology not well developed? I actually, we wrote a file to provision application on a chemical technology that I’m not terribly sophisticated with, and the technology needed to be developed. So, the idea was get my broad concepts on file in a provisional, to the extent I can, and have some expert in chemistry come in and figure out the real details, and then file a non-provisional, and perhaps, hopefully, I was hoping there’s some overlapping subject matter that can go back the earlier year.
You might not be sure of the business proposition. You might have just had an idea and someone asked a question. I think it was you. You have a whole bunch of ideas. Which one do you file on first? Well, maybe not sure, but maybe it’s important enough to get a provisional application on file relatively inexpensively.
So, another issue is sometimes you’re about to disclose it and you can be attending a conference next week. I mean, every patent attorney has the same story. They get a call 4:00 on a Friday and say, the client says, “I’m going to a conference tomorrow. Can you get this on file for me and protect it, or am I okay?” And they’re, “No, you’re not.” So, you might want get something really fast that’s not necessarily too refined, but at least protects you.
You might be talking with investors. Investors, for the most part, are very resistant to signing on disclosure agreements. Otherwise, they’d be signing them all day and they have the money, so they can tell you what they will and won’t sign a lot of times. So, to protect that, yourself, you could file a provisional application, which is again, less expensive.
Meeting with potential partners, any partners like, you know, business partners. I’m selling this valve. Maybe I want go to Baxter and say, “Hey, you know, I have a contact. He does contact in U.S. Surgical. He likes to protect his patents,” he said, “with his inventions before he talks to these people with provisonals.” It’s definitely much stronger than a non-disclosure agreement.
