Doing a Provisional Patent Search
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How To Do A Provisional Patent Search On Your Own
Given the relatively high cost of legal services associated with intellectual property law, it makes sense to learn how to undertake some of the processes one’s self. This is particularly true when it comes to conducting a patent search.
Doing a preliminary search can help you understand whether your invention is patentable, how would one go about describing the invention in a patent application, is there an existing patent that is similar, and what technology already exists in the field.
Even if you carry on a patent search yourself, you should still consider hiring a legal professional to assist you with the patent search and filing process. They can help make certain that your invention is protected to the greatest extent possible and that you are not infringing upon the patent rights of others.
As part of the patent search process, you may determine that you need to search provisional patents. In this article, we discuss what is a provisional patent, how is it used, and what is the process for searching one.
What is a Provisional Patent?
The provisional patent is somewhat of a placeholder. More specifically, an inventor may file a provisional patent with the United States Patent and Trademark Office (USPTO) to establish an initial patent filing date for the patent.
The provisional patent itself contains a description of the patented invention known as a specification. Unlike a non-provisional patent (or full patent), the provisional patent is not required to have claims. The claims are the elements of the invention for which the inventor seeks patent protection.
The inventor then has 12 months to file a non-provisional patent or amend the provisional patent to be a non-provisional patent. This means that she must make claims about the novel, non-obvious, and useful aspects of the invention for which she seeks patent protection.
This generally means including detailed drawings with independent and dependent claims that address the various attributes of the invention.
Upon doing so, the filing date for the non-provisional patent relates back to the original filing date for the provisional patent.
How is the Provisional Patent Used?
Many inventors employ the provisional patent to allow for a period of continued research and development. The inventor makes a provisional filing. She then feels secure to go out a test her product in the market. She can then make any small changes necessary to establish produce market fit.
Once she is comfortable with the final product (minimum viable product), she will file the non-provisional patent with all relevant claims and drawings.
Another reason for using the provisional patent is purely strategic. They inventor simply wishes to extend the patent examination period. Many startups file a utility patent for their invention with the realization that the invention is not patentable or any patent rights secured would not be very useful in protecting the invention from copy.
The reason for this approach is to maximize the period of time for which the inventor can claim that the invention is the subject of a “pending patent” or “patent pending”. This designation can intimidate competitors from copying the invention until a time that the patent examination process is complete and a decision rendered by the USPTO.
How Does Filing a Provisional Patent Extend the Examination Period?
The first thing to know about the provisional patent is that it is not “examined” or reviewed by the USPTO. Rather, it establishes a placeholder for the later non-provisional filing. As such, an inventor can file the provision and then with a year before the examination of the non-provisional filing will begin.
The non-provisional filing cannot vary dramatically from the general description or specification provided in the non-provisional patent; but, there is significant room for improving upon the invention during that period. This means there is ample opportunity to develop additional attributes of the functionality that can be the subject of later claims.
Why is Searching a Provisional Patent Difficult?
All of this begs the question, “Why is searching for a provisional patent filing relevant?”
As previously stated, the provisional patent is filed, but it is not examined by the USPTO. Its provisions, however, become relevant later when the non-provisional patent references it.
At that point, the patent examiner may refer back to the general description and specifications to determine the extent to which the invention was previously disclosed to the public.
Because the provisional patent is not examined, it is not published to the public at the time of filing. This is one of the reasons that the inventor is able to use it when additional research and development on the invention is necessary before filing.
She can continue to work on the invention without public disclosure but with the comfort that the filing date for the later provisional patent is established (if filed within the statutorily-allowed 12-month period).
This fact makes it very difficult to search for provisional patents. There is no public database to search that details the provisional patents that are pending at any time.
As previously explained, competitors are very wary to begin producing a product with similar features for fear of violating the provisional filer’s pending patent rights.
So, How Do You Do a Provisional Patent Search?
Well, as mentioned, you will not be able to simply search in a database for pending patents.
You may resort to other means, such as searches of new product listings. This can include press releases, published test results, new product websites, etc. Sometimes using Google to dig through the open information on potential products is the best you will be able to do when searching for products that are not yet the subject of a non-provisional patent filing.
Of course, this type of information is generally not adequate to provide the information you would find in a provisional patent filing.
There is one situation where the provisional patent application is published. Upon the grant of non-provisional patent rights, if the patent filing references a prior provisional patent, the terms of the provisional patent will be published as well.
Also, if there is a dispute in which a non-provisional patent filing claims priority over a provisional patent filing, then the contents of the provisional patent filing (generally through attorney communications) will be made public as well.
In any event, you are getting the information from the provisional patent filing without it being formally examined by the USPTO. Also, it is not easily retrieved in public databases.
This “after-the-fact” information is generally not very useful. This is particularly true for inventors or manufacturers seeking reinsurance that their product does not infringe upon the pending patent rights of a provisional patent filing.
This is a major concern, as the penalty for patent infringement is generally disgorgement of all profits obtained from the infringing invention (plus calculated losses to the patent rights holder). You can imagine that selling a product from one or more years only to be told that your product infringes upon the rights of another. Now, you have to pay over all of your profits (and maybe all your revenue, yikes!) to the original patent holder.
With this understanding, it is probably best to focus your search on pending and granted non-provisional patents. All non-provisional patent filings (whether granted or no) are published in the public register.