Skip to content
  • About
  • Services
    • Phone Interview
    • Initial Meeting
    • Invention Analysis
    • Plan of Action
    • Invention Design
    • 2D/3D Illustrations
    • Invention Engineering
    • Patent Protection
    • Market Research
    • Manufacturers Search
    • Invention Brochures
    • Licensing & Royalties
  • Submit
  • Benefits
  • Blog
  • Contact
Menu
  • About
  • Services
    • Phone Interview
    • Initial Meeting
    • Invention Analysis
    • Plan of Action
    • Invention Design
    • 2D/3D Illustrations
    • Invention Engineering
    • Patent Protection
    • Market Research
    • Manufacturers Search
    • Invention Brochures
    • Licensing & Royalties
  • Submit
  • Benefits
  • Blog
  • Contact

972-402-0000

Irving, Texas

  • About
  • Services
    • Phone Interview
    • Initial Meeting
    • Invention Analysis
    • Plan of Action
    • Invention Design
    • 2D/3D Illustrations
    • Invention Engineering
    • Patent Protection
    • Market Research
    • Manufacturers Search
    • Invention Brochures
    • Licensing & Royalties
  • Submit
  • Benefits
  • Blog
  • Contact
Menu
  • About
  • Services
    • Phone Interview
    • Initial Meeting
    • Invention Analysis
    • Plan of Action
    • Invention Design
    • 2D/3D Illustrations
    • Invention Engineering
    • Patent Protection
    • Market Research
    • Manufacturers Search
    • Invention Brochures
    • Licensing & Royalties
  • Submit
  • Benefits
  • Blog
  • Contact
Free Invention Analysis

Is your provisional patent worth anything?

  • March 16, 2016

The practice of filing provisional patent applications without proper research of prior art and often times filing a “paper clip application” does not do justice to the invention. The challenge when you are filing a patent application is you don’t know if the invention will become the next billion dollar drug. If you look what is unfolding with the University of Pennsylvania drug Juxtapid, you recognize the risks as described in the IP Watchdog article of March 13, 2016.

The practice of filing provisionals is something that has been done in a resource crunched environment where the universities typically file a quick “paper clip” provisional patent application.  The idea behind that is to achieve the following:

  1. Extend the life time of the patent by one year – By filing a provisional the overall life of the patent is extended by one year to a total of 21 years.
  2. Protect the priority date of the invention – Especially after the US has become a first to file country from what used to be a first to invent.
  3. Take care of the immediate need of protecting – In many instances the faculty member might come to the TTO the day before the presentation or sending out a publication.
  4. Save cost of filing a non-provisional patent application – A provisional filing as “small entity” costs only $130as opposed to spending $5,000 – $15,000 for a regular non-provisional patent application.

As you can imagine, if a patent which is relying on a provisional patent application does serve as the basis for a successful product, the provisional application will then be closely reviewed. In other words if you a claiming priority to the provisional patent application and the the provisional was submitted without much due diligence then you are in a bit of trouble!

Basic things to look for before applying for the provisional:

  1. Novelty – is the invention novel under §102? Performing at least a search on the basis of the invention disclosure does give some idea about prior art. Obviously, performing a deep semantic analysis gives you a pretty good idea about the landscape.
  2. Obviousness – Much harder to provide an obviousness standard but nonetheless very critical under §103. Here you have to rely on the judgement of the faculty member who is submitting the invention OR rely on your staff internally who are perhaps knowledgeable about the field. You could also perform predictive analytics to find prior art.
  3. Invention disclosure is complete – Some of the invention disclosure forms at universities such as Columbia are very well structured. That is a good starting point to ensure that the invention disclosure is well “fleshed out”. The invention is well captured in that submission.

Having said that, universities will often find themselves in a situation where it is impossible to avoid filing a provisional. What resources can they use to ensure higher quality of provisional application submission?

  1. Interns – For universities use at least 8-10 hours of intern time to look for prior art.
  2. Predictive analytics – Searching tools today have gotten a lot better than what they used to be. Many commercial ideas are available in the market for performing searches. Next generation predictive analytics are also hitting the market which rely on artificial intelligence and deep machine learning.
  3. Library resources – There are free resources through various library searches that would give you much better results than Google searching. Some examples are:
  • Scifinder
  • Medline
  • Pubmed (free for everyone)
  • Having said that, Google Scholar + Google Patents (Interestingly many of the commercial ideas rely on a far inferior set of prior art than Google and charge substantial fees. One of the best kept secrets unless you really dig deep into it).

You might not be able to file a full blown patent application when you are filing a provisional, but at least make sure you add some amount of diligence to overcome significant challenges down the road. Keep in mind if the invention never becomes a blockbuster there is no problem, if it becomes the billion dollar product you don’t want to be the one who filed that provisional application!

  • Inventions, Patent Laws, Patents
Inventions
Tech

Latest Posts

This device tells you when the stove’s been left on
This device tells you when the stove’s been left on
Are you the type of person who needs to check that the stove is off five times before leaving the ...
WeMo is a smart plug that allows you to control appliances remotely
WeMo is a smart plug that allows you to control appliances remotely
Have you ever left the iron on, only to remember hours later while you're sitting at your desk at work? ...
The pocket-sized Nix Sensor digitizes colors on demand
The pocket-sized Nix Sensor digitizes colors on demand
Assuming that you're in fact not some sort of color wizard, The Nix Mini Color Sensor could be an awesome ...
Sit back, relax, and let this electric bike go 236 miles on one charge
Sit back, relax, and let this electric bike go 236 miles on one charge
E-bike technology isn't exactly new — we've seen multiple scattered across the Internet for a few years now, all claiming ...
Think you can invent a personal jetpack? Boeing could give you $2 million for it
Think you can invent a personal jetpack? Boeing could give you $2 million for it
Boeing really wants to make personal jetpacks a thing, and they’re asking for your help. Boeing is sponsoring the GoFly ...
Use this super smart case to instantly print photos from your phone
Use this super smart case to instantly print photos from your phone
The upside to advanced camera phone technology is super sharp pictures we can’t help but share on just about every ...
Previous
Next
View all Posts

What's on Your Mind?

Submit your Idea for your Free
Patent Search Now.

FREE PATENT SEARCH
  • 972.402.0000
  • [email protected]

What's on Your Mind?

Submit your Idea for your Free
Patent Search Now.

FREE PATENT SEARCH
  • 972.402.0000
  • [email protected]

Give Us a Call

972.402.0000

Evaluate

  • Phone Interview
  • Initial Meeting
  • Invention Analysis
  • Plan of Action

Develop

  • Invention Design
  • 2D/3D Illustrations
  • Invention Engineering
  • Patent Protection

Launch

  • Market Research
  • Manufacturers Search
  • Invention Brochures
  • Licensing & Royalties

Address

6565 N.MacArthur Blvd, Irving, Texas 75039

Phone

972.402.0000

800.962.3032

972.402.0095

Email

[email protected]

Evaluate

  • Phone Interview
  • Office Meeting
  • Invention Analysis
  • Plan of Action

Develop

  • Invention Design
  • 2D/3D Illustrations
  • Invention Engineering
  • Patent Protection

Launch

  • Market Research
  • Manufacturers Search
  • Invention Brochures
  • Licensing & Royalties

Follow Us

Facebook-f Instagram Linkedin-in Pinterest-p Twitter
© 2022, Lonestar Patent Services, Inc.

Privacy Policy | Terms of Use

Free Invention Analysis

×

Non-Disclosure Agreement (NDA)

This agreement keeps your idea safe between you and Lonestar Patent Services.

I understand that the product idea information I submit cannot be used, disclosed or sold without my express written permission. I also understand that all Lonestar Patent Services employees are required to sign an ethics and confidentiality agreement for my protection. I believe that I am the original inventor of the idea described herein. I authorize Lonestar Patent Services to review my idea and contact me in 3 to 5 business days with the results. I acknowledge that Lonestar Patent Services monitors and records telephone calls for quality assurance. I understand that Lonestar Patent Services does not promise any financial gain from the development of any new product idea.

By clicking the “submit” button below as my electronic signature, I expressly consent to being contacted about Lonestar Patent Services by phone call, auto-dialed phone call including prerecorded voice messages, text messages or email at any number or email address I provide. I understand that my consent is not a requirement for purchase of services.

Fee based service.