Patent Protection Strategies: New Choices

January 2003
The Licensing Book

"Provisional Applications" Provide an Economical Alternative

Suppose that you are a small manufacturer of consumer products with international aspirations, and that your company has invented a new product or an improvement to an existing product.  Because the invention seems potentially valuable, you would like to prevent its being copied by your competitors, so you are considering seeking patent protection.  However, you know the patent process is expensive, and you would like to be certain the investment is justified before spending the money. 

Under the U.S. Patent Law, prior to recent improvements, you had to make the decision on "gut feel" without any trade disclosure, consumer research or other outside input. The reason for this quandary was that a U.S. Utility Patent application had to be filed prior to any  "non-confidential" disclosure of the invention, because the patent laws of nearly all significant international markets require "absolute novelty"  prohibiting such disclosures. 

By way of background, patents for consumer products fall into two categories: "design patents", which protect the aesthetic appearance of a product and "utility patents" which protect the function, structure, chemical composition or process of manufacture of a product.  The costs of a design patent application are much lower, but  consistent with "getting what you pay for", a design patent offers  little breadth of protection and often can be avoided by copyists.  
Back to our quandary: until recently, a manufacturer who had chosen to apply for a Utility Patent could be disappointed to find the trade and consumer response was not great and the patent fees had been wasted.  On the other hand, if the decision had been not to make the patent investment, positive sales results would mean that the marketplace could be flooded with knock-offs, and the manufacturer would have no recourse. 

Now, however, the U.S. Patent Law offers an innovative and valuable third option: the "Provisional Application".  For about 10% of the cost of a Utility Patent application, the manufacturer or individual inventor can "stop the clock" on the loss of patent rights while assessing the response of the marketplace to the invention.  If the reception is strong, the Provisional Patent application can be followed with a Utility Patent application up to a year later, and any international applications will also have benefit of the early filing date. On the other hand, if the marketplace is less than enthusiastic, the patent expense will have been minimized. 
An additional benefit of the Provisional Patent application is that it permits use of the "Patent Pending" notice on products offering some deterrence against copying while the decision process proceeds.

As a result of these improvements, important patent strategy decisions can be made in a more informed fashion than to have been offered by the "gut feel" test. 

Jim Kipling is a veteran of 20 years representing licensors and licensees in intellectual property matters including protecting and licensing entertainment, sports, art work, brands, invention and technology rights.  He is with Frost Brown Todd LLC and can be reached at jkipling@fbtlaw.com or 513/651.6101.  ©2002 (James M. Kipling, all rights reserved)

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