Invest the time and money in crafting a complete provisional patent application. It will be the foundation for a strong and enforceable patent. Avoid the pitfall of filing a “quick and dirty” provisional. Whatever you imagine you’ll save upfront will be wasted in the long run when the patent turns out to be worthless.
Unfortunately, some companies and inventors have been taken in by the dangerous myth that a provisional U.S. patent application is but a first draft – that you can “just write something quickly and get it on file.” But in fact, a provisional application must describe the invention as completely as a non-provisional application. A “quick and dirty” description is likely to omit something essential. Instead of laying a foundation for a valid patent, the inventor could wind up with nothing.
Congress created the provisional application in 1995, to give American inventors a simplified initial patent filing. A supposed benefit was that provisional applications needn’t include formal patent claims, presumably lowering the cost of preparing this preliminary application. Nevertheless, a provisional application is defective unless its written description adequately supports the claims of the non-provisional application that will issue as a patent.
New Railhead Manufacturing learned this the hard way. In 1996, their engineeringteam invented an improved bit to drill horizontally through solid rock. Before then, when a utility wanted to lay cables and pipes under a street, the entire street would be ripped open. With this tool, you could efficiently drill under the street without tearing up the pavement. In mid-1996, New Railhead began selling the new drill. Hoping to protect their revolutionary technology, the company filed a provisional patent application in February 1997, and then filed a non-provisional application in November 1997 with description and drawings that were more complete. The Patent Office examined the application and agreed the invention was patentable. The patent issued in May 1999.
New Railhead’s success quickly attracted copycats. Other companies, including Earth Tool Company, began to sell their own version of this drill. New Railhead wasted no time defending their turf: the day after the patent issued, they sued Earth Tool for infringement. But sadly for New Railhead, Earth Tool persuaded the judge that the patent was invalid.
Earth Tool’s lawyers had detected a defect in the patent applications. The claims that issued from the non-provisional application stated that the drill bit attached to its housing at an angle. Unfortunately, that aspect was missing from the provisional application. After placing the drill on sale in mid-1996, New Railhead needed to file a complete patent application within 12 months, or be barred from ever getting a patent. The provisional patent application was filed on time but, unfortunately, wasn’t complete. The non-provisional application was complete, but it was filed too late. The appellate court in Washington, D.C. agreed with the district judge that the incomplete provisional was too weak to serve as a foundation for the claims of the later-filed non-provisional application. So the copycats could continue copying with impunity.
Inventors need fully-descriptive patent applications to protect their precious inventions, but few inventors can see their inventions with a stranger’s eye. The patent attorney’s independent perspective complements the inventor’s vision, and together they produce a more complete description of the inventive concept and its various ramifications. Don’t go it alone: you and your patent attorney are more valuable together than apart. Partner up from the outset, to ensure that your provisional application provides a rock-solid foundation to support the patent you are hoping for.
On May 19th, 2015, Gerry and Josh will be speaking to members of the Chester County Bar Association on the topic of “Cybersecurity for Lawyers and Clients”, providing a one-hour crash course on the opportunities and perils of this brave new world of incredible technological innovation, and how the legal framework is struggling to keep up. President Obama has proposed a “Consumer Privacy Bill of Rights,” the Computer Fraud and Abuse Act (“CFAA”) is being interpreted in ever-changing ways by different courts, the FTC is attempting to stay ahead of the curve, and businesses and consumers are caught in the middle. The resulting questions include: How is a lawyer to advise his or her clients about best practices? Are there best practices for lawyers and law firms themselves regarding cybersecurity? Is it time to seek a quotation for cyberinsurance?
Philly Tech Week has blossomed into an annual festival, with multiple events around the city celebrating innovation and technology. Tomorrow, one of them is at the doorstep of our law firm, and we’ll be a sponsor. Next month, we’ll also be speaking at a Chester County Bar Association lunchtime event on May 19. The topic is “Cybersecurity for Lawyers and Clients.”
Elman Technology Law sponsoring Philly Tech Week event in Media, PA
Tomorrow, April 23, from 5 to 7 PM, there will be a Philly Tech Week event on Veterans Square in Media, PA (in front of our office). Innovators and entrepreneurs will be sharing cutting-edge inventions. For years, we’ve been at the intersection of legal innovation and technological innovation, and this event is right in our wheelhouse.
Visit with colleagues from our firm at our sponsor’s table, where you can pick up a calendar with images from historic patents or other item of swag. Enjoy the pleasures of the beer garden and interactive game area as well.
And check the list of speakers to find out if we have been selected to present for 5 minutes about an innovative service. Which of these would you be most interested in hearing about: “Protecting you from the Internet of Things”, “Secure your Nest and Your Business”, and “Legal essentials to help consumers and businesses deal with this brave new world of technological innovation”? Drop us a line to let us know what you think.
We look forward to seeing you!
What: Elman Technology Law sponsoring Philly Tech Week event in Media, PA
Where: outside our office at 12 Veterans Square in Media (at the front of the Delaware County Courthouse). For directions, click here.
When: 5 – 7 PM on Thursday, April 23, 2015
Join us Monday, October 20, 2014, for a presentation at noon by European Patent Attorney Steve Zeman, of the Grünecker firm in Munich.
We look forward to learning from Steve’s extensive experience with the European Patent Office in seeking to overcome “new matter” objections and other particular difficulties.
Though educated primarily in the United States, Steve is licensed as a German and European Patent Attorney and as a European Trademark Attorney. He holds degrees in chemistry and biochemistry from the University of California at San Diego and from Yale (Ph.D. 1999).
This meeting is co-sponsored by Elman Technology Law and Bob Yarbrough’s Delaware County Pennsylvania Intellectual Property Forum. Pennsylvania CLE credit will be available for existing and new members of the Forum. Participation is free of charge, but preregistration is required. Call 610-892-9942 for further information or to register .
Venue: the Delaware County Bar Association headquarters, 335 W. Front Street, Media, PA 19063, basement conference room. You’re welcome to bring a “brown bag” lunch.