The following information intends to answer some of the initial questions you may have in pursuing protection for your invention. Patent law is not an area of common sense, and feeling lost when you are just getting started is not uncommon. This post will answer the questions you may hesitate to ask.
Know Where You Are
First, The AIA set forth the “first to file” approach to protecting your invention. This is not the same as an actual race to file, as one must still be the inventor. However, it is in your best interest to file as soon as possible. The question then becomes, what should be filed? Generally that is going to come down to a provisional or non-provisional application.
Individuals at an early stage of conception and development should consider a provisional application as an opportunity to establish a filing date without having to present concise claims, which specifically identify the subject matter seeking protection. A provisional application acts as a priority document providing support for material to be claimed in a subsequent filing. However, the filing of a provisional begins a 12-month window for which you are allowed to further evolve and develop your subject matter. Before the end of this window, a non-provisional will have to be filed directed to the subject matter contained within the provisional application to maintain your priority. Keep in mind; the provisional application is never reviewed on the merits.
A provisional application is not a requirement for patent protection. If you have been developing your invention and are more certain of the utility, a non-provisional filing may be the option for you. The USPTO is going to add a non-provisional application to the Examiner’s docket for review. Beyond a provisional filing, a non-provisional application requires further drafting and other specific components for the filing. Claims, directed to the specific subject matter that the inventor(s) hold as the invention, have to be included to a non-provisional filing.
Why not always file a provisional application? A number of answers may prompt an inventor to begin with a non-provisional filing. One of the most obvious reasons is the desire for beginning the USPTO review. A non-provisional filing may benefit business and marketing strategies as well. Working through the prosecution of an application allows an inventor to see what prior art comes through in the Examiner’s search. Remember, the non-provisional application is the filing that has the potential to issue as a patent, whereas a provisional does not.
You have filed your non-provisional application and the Examiner takes action. This is not cause to hang your head. Rather, you should look at office actions as opportunities. USPTO Examiner’s conduct extensive searches based on their broadest reasonable interpretation of the claims presented. With their understanding of your invention, they will present prior art that you are able to overcome and establish the inventive features within your application. Consider this; if your application does not result in any prior art issues, are your claims so narrow that your application results in worthless protection of something that has no marketability? Following through on your patent application is a process that goes far beyond technical ability to include intricate strategy to ensure that you receive the protection you need with the marketability you want.