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TechRoadmap Directions
  Intellectual Property Issues of Interest to High Tech Companies
Vol 2 Issue 10 November 2002

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IP Links of Interest

On-Line Patent Glossary


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Directions, is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices.

A little knowledge is a dangerous thing... and so is a lot of misunderstanding!! Given that the basic patent laws have been around for many years it is surprising that so many sophisticated individuals fall into the trap of mistaking a patent application for a patent. This month's lesson comes from Philo Farnsworth's experience and how the Provision Patent Application has made the problem worse. If you don't know who Philo was, read "Don't give it away".

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  • Don't give it away!

During the past month I read a book and attended an "Executive Forum" on Intellectual Property. Neither activity was unusual but I was struck by a common undercurrent of mistakenly believing that a patent application provides protection for your invention.

The book was "The Last Lone Inventor" by Evan Schwartz. It recounts in a folksy way the story of Philo T. Farnsworth, the essentially unknown inventor of electronically scanned television. While the book's thesis - there is no place for the lone inventor to succeed in today's corporate R&D world - is arguable, what struck me was the naiveté of inventor Farnsworth about the US Patent system and the rights it bestows (or more to the point, what it doesn't bestow).

As surprising as it seems, Farnsworth, having filed his patent applications, openly taught the details of his TV camera and image tube to the chief scientist from RCA, the company that would later steal the commercial success due Farnsworth. Apparently Farnsworth felt protected by having his application on file.

At the executive forum I heard the contemporary version of this error. A venture capitalist, suggesting that impoverished start ups needed to protect their IP no matter what, said something to the effect of "they can file an application for a provisional patent for very little money". Ouch.

Leaving aside that the proper term is a provisional application for a patent, the real problem is the implication that a provisional application can be quick and dirty (viz., "cheap") but still provide significant protection for an invention.

The truth of the matter is a provisional application, being an application, can never provide "protection" for anything more than your right to try to get a patent. A provisional application can buy a start-up time - time to further evaluate its invention, time to raise more funding, time to try to get some sales revenue. But if the provisional application is flawed, perhaps by not adequately describing the invention, then any non-provisional application filed later will have to add new matter to the specification AND CANNOT BENEFIT from the earlier filing date of the provisional application, at least to the extent that that the provisional was lacking.

So, yes, filing a provisional application can be a less expensive way to initiate the patent process, but remember that the costs are only deferred. A more important point to keep in mind is that the patent rights you ultimately receive will be directly related to the quality of the provisional application you file. The provisional application process is best used to buy time, not save money.

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  • Tip of the Month

Remember, only an issued patent gives you any rights to "protect" your invention. Understand the differences between a patent, an application for a patent, and a provisional application for a patent:

  • Patents - give you the right to prevent others from building/selling your invention. Does not extend beyond what's in the claims. Does not mean that you can build your invention.
  • Application for a Patent - Your request to the government for patent rights that may or may not be granted. Gives you the right to obtain a patent even if you choose to reveal your secret invention in public.
  • Provisional Application - A placeholder that locks in your right to apply for a patent at a later (up to 1 year) date.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  The following link should take you to the web based version of Directions, where you will find the on-line Patent Glossary.

Industry's Best Glossary
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Nothing in the preceding newsleetter should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.