Why You Should File a Provisional Patent Application, Especially if You’re a Start-up.

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott sbschott@schottpc.com

Yesterday I heard this conversation between a venture capitalist and a start-up company with an excellent idea.

VC: “It’s a crowded market with lots of competition. Do you have patent protection?”

Start-up: “No, not yet.”

VC: “But you have some pending patent applications?”

Start-up: “No, we wanted to get our product to market first then go back and maybe get a patent.”

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The venture capitalist politely exited the conversation. Why? Did you ever see Ghostbusters? If you did, there’s a moment in it where Winston advises Ray that “When someone asks if you’re a god, you say YES!” I would advise innovative start-ups similarly. “When someone asks if you are seeking patent protection, you say YES!”

The VC manager bailed out of the conversation not because the start-up might fail, but because the the start-up didn’t have the foresight to start protecting its idea and creating the most valuable of assets: the patent. Why should a small company, start-up, or new business consider filing a at the very least a provisional patent application? Here are a few reasons.

(Before discussing the reasons why you should at least file a provisional application, take a gander over here if you want to know what a provisional patent application is.)

6 Reasons to File a Provisional Patent Application

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(1) A patent application shows you’re innovative. Filing a patent application lets people know that you think your idea is so good that you want a patent on it. If you’re willing to bet on your innovation, someone else might be willing to do the same.

(2) A patent application creates an asset. The monopolistic rights that go along with a patent don’t exist until the patent grants but the application starts the process of getting a patent. The patent is a more valuable asset but the application is also an asset that will impress an investor or business partner.

(3) You can use PATENT PENDING. PATENT PENDING is a label that informs the world (clients, competitors, investors) that you appllied for patent protection. When someone sees this on your products, packaging, advertising, and marketing, it puts them on notice that you are pursuing a patent and if they are thinking of copying your idea, they must tread lightly.

(4) Your partners and investors will take comfort from seeing you invest in your own ideas. Filing an application shows that you raised or spent money and invested it in your invention. This inspires confidence in others.

(5) Filing an application is important because of the “first inventor to file” rule. The United States recently followed many other countries and became a “first to file” country, meaning that if two people invent something independently, the first of them to file their application at the patent office will receive the patent for it, regardless of who invented it first. Thus, filing your patent application is critical to insure someone else does not file for patent protection on your invention.

(6) A provisional application is an inexpensive way to buy yourself a year to vet your idea. If you decide to file a provisional patent application instead of a non-provisional patent application, you will make less of an investment to secure a patent application filing date for a year while you test your market. This savings can be spent on marketing, tooling, and other start-up expenses. At the end of the year, you can decide whether you should then file your nonprovisional application.

If you have questions, please contact me.

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Patent Law Basics: What is a Provisional Patent Application?

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott


Provisional patent applications are confusing. They don’t mature into patents. But they kind of do. The US Patent and Trademark Office doesn’t review them like they do a nonprovisional patent application. But they still must meet strict legal requirements or they are useless. And the name itself is confusing because the “real” patent application that matures into a patent—the nonprovisional application—is named with a negative prefix of the provisional.

While I can’t defend the poor naming of the nonprovisional, I can take a shot at explaining what a provisional patent application is.

What is a provisional patent application? A provisional patent application is a placeholder application. It establishes a filing date for your patent application and if you file a nonprovisional patent application within one year of filing the provisional, it secures a filing date for your invention.

Provisional patent applications DO:

  • Give you the right to use the term PATENT PENDING. This has marketing advantages and puts competitors—large or small—on notice that you are seeking protection for your invention.
  • Secure your application’s filing date for purposes of the first inventor to file rule. This is increasingly important because the United States grants patents to the first inventor to file, so getting your application on file is critical—the last thing you want is for someone to come up with your idea later than you and beat you to a patent because they filed first. (Dan Lievens at 3DL Business Studio wrote a blog post on this topic that summarizes the first to invent issue well.)
  • Establish a filing date for the purposes of prior art that will be cited in the US and international patent offices. The provisional application’s filing date is the date from which the US Patent and Trademark Office measures whether references can be cited as prior art, that is, whether a reference can be used to argue your application is not novel or non-obvious.
  • Give you time to market your invention, test the market, raise money, contact manufacturers, and build your business. The catch is that once you file the provisional application, you start a one year clock ticking until you must file your nonprovisional application or you lose your filing date.
  • Keep your invention secret, if you want. Your provisional patent application is kept confidential in the US Patent and Trademark Office until any nonprovisional patent application publishes or until any eventual patent issues. Thus, if secrecy is your goal at the moment, you can file the provisional application and continue to keep your invention secret.

Provisional patent applications DO NOT:

  • Give you the right to exclude others from making, using, or selling any product. The provisional application grants no right to exclude and there is no such thing as infringing a provisional patent application. Only a patent grants a right to exclude and a patent is the end result of a nonprovisional patent application, not a provisional patent application.
  • Mature into patents. Provisional patent applications do not mature into patents. If you file a nonprovisional application within a year of the provisional patent application’s filing, in a sense, they may eventually mature into a patent.
  • Receive examination from the US Patent and Trademark Office. The USPTO will only review your provisional patent application to confirm that you have met the formalities requirements. It does not review your provisional application for patentability.

Provisional patent applications do not need to meet all of the standards of a nonprovisional patent application, and for that reason they are less expensive to file. But provisional applications must still meet certain legal standards.

Requirements of a provisional patent application:

  • a written description of the invention that complies with all legal requirements of 35 USC 112,
  • any drawings necessary to understand the invention in compliance with 35 USC 113, and
  • formalities requirements such as the title, identification of the inventors, correspondence address, and whether there is a government ownership interest.

If you have questions, contact me.

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December-January Newsletter is out!

by Stephen B. Schott sbschott@schottpc.com

Did you know that we have a Newsletter called Idea Law News? It’s out and you can view it here.

If viewing it online isn’t good enough and you want to our Newsletter delivered to your inbox once every month, you can sign up here.

And if once every two months is not enough for you, look over there on the left of this page. You can sign up to see our blog updates as they happen.

Demystifying the Final Office Action: 7 Options for Responding to a USPTO Final Office Action

By Stephen B. Schott

When the US Patent Office named the final office “final,” it made a mistake. In Japan, a final rejection is truly final. It’s the end of the line. But here in the US, our “final” office action is just an action that opens up several options for response.


I put together this chart with an explanation of the 7 options for responding to a final office action. It’s an ugly flowchart but please don’t blame me, blame the USPTO—it’s not the simplest stage in the patent prosecution process. (Click on flowchart to get full size view.)


  1. File a response under the After Final Consideration Pilot Program (AFCP). The USPTO’s AFCP program encourages examiner-applicant interviews. Under the AFCP program, you file a response and the examiner either:

(1) determines that the response requires more than 3 hours of additional search and issues an advisory action (keeping the response simple avoids this outcome);
(2) issues a notice of allowance; or
(3) schedules an interview to discuss the response.

After the interview, the examiner will either issue a notice of allowance or an advisory action.

The deadline to respond to the final office action continues to run when participating in the AFCP program so it is important that we start this process as soon as possible after receiving a final office action.

The response under the AFCP program must:

(1)   respond to final office action;
(2)   amend at least one independent claim without broadening the scope of the claim in any way; and
(3)   include a request and statement signifying applicant is willing to participate in an examiner interview.

There is no USPTO fee for choosing this option.

  1. File a response within two months of the final office action’s mailing date to minimize the impact of extension fees. If you file a response within two months from the date of the final office action’s mailing date, the USPTO will calculate your extension fees differently, and usually examine your response quickly.

When filing a response within the two month deadline, the USPTO calculates extension fees from: (1) the final office action due date if the advisory action is mailed within three months of the final action mailing date and the applicant’s response was filed within two months of the final action, or (2) from the date of the advisory action if the applicant’s response was filed within two months of the final action and the advisory action was mailed more than three months from the final office action mailing date.

The response should have no, or minimal, amendments and include argument or remarks explaining the reasons for patentability.

The deadline set in the final office action continues to run even if the examiner does not respond. This means that you may incur late fees or even abandonment if the examiner does not reply in a timely manner.

If the examiner believes that the response fails to overcome the final office action, the USPTO will issue an advisory action. If the examiner believes that the response overcomes the final office action, the USPTO will issue a notice of allowance.

There is no USPTO fee for filing a response within two months of the final office action mailing date.

  1. File a notice of appeal and (1) A pre-appeal brief conference request, or (2) File an appeal brief. A notice of appeal starts the appeals process and requires payment of an official USPTO fee. At any time during the appeals process, you can file a continuation application, divisional application, continuation-in-part application, or a request for continued examination with a response (see number 4, below).

You may elect to file a pre-appeal brief conference request that must not include claim amendments and have no more than 5 pages of argument regarding 35 USC 101, 102, 103, and 112 issues. A three examiner panel, including the examiner who issued the final office action, reviews the request. If the panel agrees with the request, the USPTO issues a notice of allowance or new office action. If the panel disagrees with the request, the application proceeds to the next step in the appeals process.

You may elect to file an appeal brief. If you do, your appeal brief is due within 2 months of filing the notice of appeal. The examiner will issue a brief in response to that, and you will have the option of replying to that brief. You can request an oral hearing before an impartial panel of examiners who will make a determination on the appeal once the briefing is complete.

The USPTO charges a fee for filing a notice of appeal and another fee for requesting an oral hearing.

  1. File a response with a request for continuation (RCE). If your response is substantive, the RCE removes the finality of the last office action and the next office action you receive will be nonfinal.

The USPTO charges a fee for filing an RCE and subsequent RCEs incur a higher fee than the first RCE.

  1. File a response more than two months after the final office action’s mailing date. You may file a response after the two month deadline discussed in (2).  If the examiner believes that the response fails to overcome the final office action, the USPTO will issue an advisory action. If the examiner believes that the response overcomes the final office action, the USPTO will issue a notice of allowance.

When filing a response under this option, all deadlines for responding and all extension fee deadlines continue to run, even if the examiner does not review your response. Thus, you may incur substantial fees or your case may go abandoned.

We do not recommend this course of action unless you have extremely minor amendments that will place your application in condition for allowance.

The USPTO charges no fee for filing a response after final.

  1. File a continuation, divisional, or continuation-in-part application. These are all new applications based on the current application. Continuation and divisional applications have the same disclosure as the current application and share its priority date. A continuation-in-part application adds disclosure to the current application and does not share its priority with respect to the additional disclosure. All three types of applications are new applications and restart the application process for the new applications. The current application’s response date will continue to run until you file a response or the current application goes abandoned. Abandonment of the current application does not abandon the new application.

The USPTO charges its normal filing fees for filing any of these applications.

  1. Abandon the application. At any time, you may take no action and allow the application to go abandoned or affirmatively abandon the application.

The USPTO does not charge a fee for abandoning an application.

If you have questions, contact me.

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A Patent Attorney, the Musical?

By Stephen B. Schott sbschott@schottpc.com

There’s an old line (a knee-slapper in patent circles) that goes something like, “The only person you want to avoid more at a party than an accountant is the patent attorney.” I get it. We’re lawyers, and as if that wasn’t bad enough, we’re scientists. We are the neurosurgeons of the law—super-specialists with few good stories and propeller-head personalities.

As you can see below, even my best efforts probably won’t contradict your opinions, but I gave it a try.

Maybe this will be my new elevator pitch.

If you have questions, contact me.

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Hot Off the Press: Updates to USPTO Practice

By Stephen B. Schott sbschott@schottpc.com
imgres_med_hrLike ebony and ivory living together side by side on my piano keyboard, the US Patent and Trademark Office’s goal is harmony. The PTO’s current harmonic goals bring it into compliance with the Patent Law Treaties Implementation Act of 2012. That act became law on December 18, 2013 and further aligns United States patent practice with that of other countries.

The USPTO issued a memo summarizing the changes for its examiners. The highlights for applicants include:

(1)   Patent applications no longer require a claim at the time of filing. Failure to file an application with a claim will result in the USPTO issuing a notice requiring a claim to be filed at a date specified in the notice.

(2)   Many office actions that previously set one month to respond, including those for restriction requirements and non-compliance, now allow for two months to respond. This is especially welcome for firms that work with international clients where correspondence and translations to and from the client may be delayed for weeks.

(3)   An application may now validly claim priority to, or the benefit of, a foreign or provisional application filed up to fourteen months earlier (eight months for designs to validly claim foreign priority). Any application that claims priority to a foreign application or the benefit of a provisional application filed more than twelve months earlier (except as a continuing application of another non provisional application) must include a petition to restore the right of priority to the foreign application.


Thanks to Donald Zuhn at McDonnell Boehnen Hulbert & Berghoff LLP for bringing the memo to my attention in his blog.

If you have questions, contact me.

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The Ten Most Important Patent Cases

By Stephen B. Schott

What are the 10 most important patent cases? University of Iowa professor Jason Rantanen of Patently-O answered this question with his list of the top 10 patent cases. My Christmas gift to you: A short summary of each case.


Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Once upon a time, there was a case called Texas Digital Systems, Inc. v. Telegenix, Inc. The author of this article worked on that case, was on the trial team that tried it in Dallas over 4 boiling weeks in August, and won the federal appeal from that trial. For 3 years, Texas Digital Systemswas the most cited patent case in the United States. ThenPhillips came along, overruled just one part of Texas Digital Systems, and ended my 15 minutes of patent fame. You could say that Phillips messed with Texas.

Phillips is the primary reference case when deciding how to interpret the meaning of a word or phrase in a claim. Specifically, courts must look at, in order of importance:

  1. A claim term’s plain and ordinary meaning in view of the patent’s use of the term;
  2. The meaning of the term as informed by the patent’s prosecution history, that is, the back and forth correspondence between the inventor and the US Patent and Trademark Office; and
  3. The meaning of the term in extrinsic sources like scholarly journals, expert witness testimony, and perhaps dictionaries, although dictionaries can inform the plain and ordinary meaning in (1).

Bowman v. Monsanto, 133 S.Ct. 1761 (2012). You can’t copy a patented article and reuse it. This holding may seem obvious but in this case, the article was Monsanto’s patented soybean seed, and the reuse was a later planting using seeds produced from the first planting.

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O’Reilly v. Morse (also known as The Telegraph Patent Case), 56 U.S. 62 (1853). Samuel Morse is just off the Mount Rushmore of famous inventors. Not only does he have an unmatchable appearance, but at least in this case, he tried to protect not only his invention, but just about every improvement that would come subsequent to it, using the language in a patent claim, “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims….” The Supreme Court found that this language went beyond the scope of patentable protection and was not enabled. Later cases expanded the O’Reilly holding to preclude inventors from claiming mere abstract ideas.

Diamond v. Chakrabarty, 447 U.S. 303 (1980). General Electric’s inventor Chakrabarty created a bacterium capable of breaking down crude oil, a useful life form for cleaning up oil spills. The Supreme Court considered whether creation of this living organism was within the scope of patentable subject matter and decided that a live, man-made organism was an article of manufacture, and thus protectable under patent law.

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Egbert v. Lippmann, 104 U.S. 333 (1881) and City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878). These two cases consider the limitations of the public use and the on sale bar that prohibit an inventor from securing a patent when the invention is publicly used or sold more than a year before the date of the application for patent. In Egbert, the inventor of a steel corset-spring gave his inventive corset to his then-girlfriend in 1855, showed the corset to someone in 1863, applied for a patent in 1866, and later sued for patent infringement. The Supreme Court found the corset-spring patent invalid both for being used in public—even though such use was modestly unseen—for 11 years before the application for patent, and because the corset-spring gift was given without restriction to keeping it secret. City of Elizabeth considered just the public use question. In City of Elizabeth, the inventor Nicholson experimented with his inventive pavement for years before his application for patent. He performed his experiments using his pavement in publicly trafficked areas. After 6 years of such experiments and having identified which pavements were the most advantageous, Nicholson applied for a patent. In ruling that the patent was not invalid due to public use, the Supreme Court created an exception to the public use bar for experimental uses.


Graham v. John Deere, 383 U.S. 1 (1966); KSR v. Teleflex, 550 U.S. 398 (2007). These two cases describe the tests for determining whether a patent claim is invalid as obvious. InGraham, the Supreme Court held that in considering whether a patent claim is obvious, courts must consider the following factors: (1) The scope and content of the prior art; (2) the differences between the claimed invention and the prior art; and (3) the level of ordinary skill in the prior art.

The Supreme Court went on to suggest “secondary considerations” that could serve as evidence of nonobviousness including: (1) The invention’s commercial success; (2) long felt but unsolved needs; and (3) failure of others. From 1966 to 2007, obviousness law was in a state of flux until a string of cases in 2004-2007 resulted in an obviousness test that Justice Scalia described as “gobbledygook.” Seeking to de-gobbledygook obviousness, the Supreme Court in KSR held that there is no rigid test for obviousness and that a patent claim is invalid as obvious if a person of ordinary skill in the art would have found it obvious to try the claimed solution when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.

The Incandescent Lamp Patent Case, 159 U.S. 465 (1895). The inventors in this case sought to accuse none other than Thomas Edison and his bamboo filament bulb, of infringing their patent. On reviewing the patent in question, however, the Supreme Court found that the patent’s description was so vague and uncertain that the public could not tell, except by independent experiments, how to construct the patented device, and thus found the patent invalid.

Graver Tank v. Linde Air Products, 339 U.S. 605 (1950). Graver Tank took up the issue of whether a product infringes a patent claim when the claim does not quite read on the product. In deciding that a product can infringe a claim if the product is equivalent to, but not literally within, the claim, the Supreme Court formulated a test for equivalents. An accused product is equivalent if it performs substantially the same function as claimed, in substantially the same way as claimed, to yield substantially the same result as claimed. This function-way-result test remains a valid equivalents test and the cornerstone of the Doctrine of Equivalents

Gorham v. White, 81 U.S 511 (1871). Gorham involved forks and in particular the test for infringement of a specific type of patent on a fork called a design patent. A design patent’s scope is limited to the ornamental appearance of its drawings. Compare the accused and found-to-be-infringing designs on Christopher V. Carani’s webpage. The test for infringement of a design patent is “If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such to deceive such an observer, inducing him (or her) to purchase one supposing it to be the other, the first one patented is infringed by the other.” This is the “ordinary observer” test.

If you want a more in depth discussion of the cases, please take Jason’s Introduction to Intellectual Property class. Otherwise, give yourself an A and I’ll see you after Christmas.

If you have questions, contact me.

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Start-ups: Get a Patentability Opinion to Help Raise Money

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
dollar_med_hr“I need money.”

That’s a common complaint among technology start-ups. There are many ways to get money and one tool for convincing investors of any size to invest in your start-up is by securing a patentability opinion.

What is a patentability opinion?

A patentability opinion* is a legal opinion about the patentability of your idea. In it, a lawyer renders a professional judgment about your chances of getting a patent based on a thorough search of patent archives and other sources. An outside patent searching expert usually conducts the search and the opinion is given after reviewing the search results.

Sometimes the search reveals a few things that you didn’t know about. This can be disheartening, leading to a “Someone already had my idea” moment. But in that moment, I try to calm the inventor who sees a negative search result. A few patents, papers, or websites in the general area of your invention can sometimes be a good thing. Working together, we can figure out what makes your idea better than all the others. Generally, after a short while, we identify what makes your invention better and how it improves upon what is known, and that is the basis for a positive patentability opinion. Once you have that positive opinion, you can use it as a fund-raising mechanism and here’s why.

  1. The patentability opinion shows that you have a new idea. One of the concerns that your potential investors may have is that your idea has been done before. They hear you saying it’s new, but there’s that lingering doubt. Didn’t Microsoft already solve this problem? Are you really sure that Sony doesn’t already make one of those? A positive patentability opinion soothes those concerns.
  2. The patentability opinion shows that you can create an asset before you actually create it. Patents create value in your business. Whether you want to build the next Apple or Facebook, or are hoping to just create a small business that might be acquired later, a patent is the coin of the realm. The businesses that you compete with may steal all of your ideas unless you have some protection. The business that wants to buy your company will want to see that you have patents before making a commitment. And at the beginning stages of raising money, your investors want the assurance that you will be able to secure patents and the value that goes along with them.
  3. Although a patentability opinion is not the same as a noninfringement or clearance study,** it gives a sense of your field’s technological development.Having a clearer view of what others in the field think is innovative presents your investors with an overview of the level of creativity in your field. The partial state of the art in a patentability opinion shows your investors the value of your invention relative to your competitors.
  4. Securing a patentability opinion shows that you’re willing to invest in yourself.Even though securing a patentability opinion is not as expensive as a utility patent application, it shows that you’re willing to make a financial investment in your idea.
  5. The patentability opinion is one of the first steps in building a business founded on your creativity. It’s not the most important step in building the business but it’s a tangible and professional building block that announces your intent to create an intellectual property portfolio, and your investors will understand and appreciate that.

Your patentability opinion, besides giving you and your patent attorney some guidance on how to craft your future patent applications, can be used as a fund-raising tool in the early stages of your growing business. That’s why this simple and relatively inexpensive legal document should be part of your startup’s marketing plan.

If you choose to share your patentability opinion with your investors and potential investors, you might ask your patent attorney to join you for the meeting. He can’t pitch your idea but he can explain how he reached his conclusions and be a voice of support for your inventiveness.

If you have questions, contact me.

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* The Intellectual Property Owners Association has a good overview of the types of patent opinions you can obtain.
** These will be discussed in a future article.