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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