Provisional Patent Application question

[ideaboy]

Question:

Provisional patents are incomplete. Yes, they allow us to take the idea into the market with the label "Patent Pending"; what if another person comes up with the actual complete working patent (may be with slight improvements) and patents the product? I ask because, the Patent office will not review the provisional patent application unless I file a non-provisional patent application, this means they have no way of knowing whether the actual patent filed by the other person is unique. And, since the patent office hasn't looked at my idea yet (because of its provisional status), they have no way of knowing if my idea is copied in the patent applications. How do I protect my idea when it has the label "Patent Pending"?

[Brad]

Hi,

These are good questions.  I will try to answer each of them.

1)  A provisional patent application should never be incomplete.  In order to be a valid patent application you must teach in detail how to make and use your invention.  Because of this, I am not sure if I understand this part of your question.  An incomplete provisional patent application is legally worthless but may have some marketing value by saying that you are "patent pending".

2) One of the biggest advantages of the provisional patent application is that it secures your filing date and essentially holds your place in line.  This is very important because the US is now a "first to file" patent country.  So the value here is that if you filed your provisional application on January 1, 2012 and your competition filed their full non-provisional application on February 1, 2012 (one month after you), then assuming you file a full non-provisional application one year later you can link your full non-provisional application back to your provisional application and since you were the "first to file" you can block your competition from getting a patent.   

3)  You are correct that you cannot sue people with a "patent pending" application.  However, sometime just using this term may scare off some small competition thereby giving it value.  In some cases once your pending non-provisional patent application is published you can collect royalties from this point in time assuming that your patent eventually issues.  This is called "provisional rights"

4) A pending patent application (even a provisional application) has value.  It is an asset to your business just like inventory, equipment, supplies, etc.  It can be sold and licensed just like any other asset.   I was part of a deal where we licensed two provisional patent applications for $40,000 so it would be a mistake to think that provisional applications are worthless. 

I wrote a good post on all of this here:
https://patentfile.org/you-have-a-patent-so-what/

[ideaboy]

Thank you for the reply Brad; they helped me. I will get back to you with more questions.

Thanks,
ideaboy