In short, file a provisional patent application and then begin disclosing your technology.  Obtaining a utility patent is not a cheap expenditure, costing anywhere from $18,000-$30,000 throughout the 20 year life of the patent, as outlined in How much does it cost to procure a US utility patent?.  Making a decision to obtain and maintain a utility patent should be thought through.  One way to get a sense of whether or not you should seek to obtain a utility patent is to disclose your technology to different companies, manufacturers, and customers. While secrecy is vital in early stages, there has to come a time when you will choose to disclose your technology, provided you do not want to opt for trade secret protection.  Of course, you should never disclose without having some degree of protection in place.  Enter the provisional patent application.  

Filing a provisional patent application is rather inexpensive in the grand scheme, costing anywhere from a few hundred dollars to a few thousand.  The reason a provisional patent application is much less expensive is that it does not have to satisfy any strict formal requirements (e.g., no extensive claims, no properly numbered drawings, etc.).  However, while less is involved with filing the provisional, the one thing you must make sure of is that it will enable the invention.  That is, if you do decide in the future to file a non-provisional application, the claims in that non-provisional must be enabled (e.g., taught and/or disclosed) by the earlier filed provisional application.  Failing to do this could be disastrous.  As such, it is advisable to make provisional patent applications very robust. Furthermore, when a provisional patent application is filed, applicants will have one year from the filing date to file a nonprovisional patent application.  Failure to do this prevents applicants from benefiting from the provisional patent application’s filing date.  

When you file a provisional patent application that is enabling of all of your inventive subject matter, you are safe to disclose your invention.  Can the provisional stop people from copying you when you disclose?  Not immediately.  However, if you do eventually get a patent, having filed that provisional patent application, and marking your technology with the words “Patent Pending” will give you great leverage in going after those who copied you.

Now that it is safe to disclose your technology, you will have one year to learn about the market’s interest in your technology.  You can show your technology to different companies and customers and gauge their response.  If you get little positive feedback from your test of the market during this period, that will be a good indication to you that seeking a utility patent is probably not in your best interest.  In this regard, you will have saved yourself a considerable amount of money by proceeding with the provisional patent application, which still allowed you to disclose while being protected.  On the flip side, if there is a big response by your test of the market, and you determine that in fact it is a worthwhile investment to attempt to procure a utility patent, you can proceed with the nonprovisional patent application before the one year anniversary of the provisional patent application’s filing date.  Though the costs may ultimately be a bit higher, you will have safeguarded against a potentially large waste of money.

This article was authored by John P. Powers, is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2021, all rights reserved.