Provisional patent or rely on prior art protection?

[bartleby]

With the new first to file patent laws going into effect this Friday I am confused on how I should approach patenting my product. It is a software platform and I am about 2 months from offering it to the public. From what I understand I can put in a provisional patent right now, which will protect my product for 1 year, or I can wait until I launch and this will give me a year from launch, since it is prior art. Am I understanding this correctly? Seems like it is obvious just launching will actually protect me for a longer period, barring someone else building and patenting the same thing in the next two months.

Thank you,
Justin

 

[quincy]

With the new first to file patent laws going into effect this Friday I am confused on how I should approach patenting my product. It is a software platform and I am about 2 months from offering it to the public. From what I understand I can put in a provisional patent right now, which will protect my product for 1 year, or I can wait until I launch and this will give me a year from launch, since it is prior art. Am I understanding this correctly? Seems like it is obvious just launching will actually protect me for a longer period, barring someone else building and patenting the same thing in the next two months.

Thank you,
Justin

What state in the U.S. do you reside in, Justin?

Submitting a provisional patent now eliminates some of the legal risk that comes from offering your product publicly first. It is really up to you, although consulting with an IP attorney in your area to review the facts is never a bad idea.

 

[bartleby]

What state in the U.S. do you reside in, Justin?

Submitting a provisional patent now eliminates some of the legal risk that comes from offering your product publicly first. It is really up to you, although consulting with an IP attorney in your area to review the facts is never a bad idea.

Thanks for the quick response. I live in Utah.

My big concern is I would be doing the provisional patent myself as I don't have the funds to have a patent attorney do it for me right now. Only having three days to complete it is a bit overwhelming. Will it make much of a difference whether I file it before the new first to file laws go into effect Friday vs. after?

 

[quincy]

Thanks for the quick response. I live in Utah.

My big concern is I would be doing the provisional patent myself as I don't have the funds to have a patent attorney do it for me right now. Only having three days to complete it is a bit overwhelming. Will it make much of a difference whether I file it before the new first to file laws go into effect Friday vs. after?

Will it make much of a difference? It could.

There is a public forum scheduled for this Friday (the 15th) that will provide more information on the final rules for first-inventor-to-file, micro-entity and patent fees. Of course, this is only one day before the first-to-file system goes into effect (March 16).

If you do not have the funds to consult with a patent attorney (unfortunately FA's resident patent attorney, divgradcurl*, has been AWOL for awhile now), I can only suggest that you submit either a provisional application or regular patent application prior to making your product public.

There will be more of a legal risk now to marketing your product to the public prior to securing a patent (or having a patent pending), because the new law eliminates disputes over who was first to invent by giving the rights to an invention to the first one to file for a patent.

As a note, the new patent law, changing first-to-invent to first-to-file, puts the U.S. in line with other countries of the world. The patent first-to-file system is similar to how trademark ownership is determined in many countries - ownership of a mark belongs to the first-to-register the mark in most countries but here in the U.S., trademark ownership is still determined by a first-to-use-a-mark-in-commerce system.

Again, it is best if you can seek out a patent attorney in your area or check for online access to the USPTO's public forum on the new law scheduled for Friday.

Good luck.


*note to divgradcurl: Your expertise is sorely missed.

 

[bartleby]

Will it make much of a difference? It could.

There is a public forum scheduled for this Friday (the 15th) that will provide more information on the final rules for first-inventor-to-file, micro-entity and patent fees. Of course, this is only one day before the first-to-file system goes into effect (March 16).

If you do not have the funds to consult with a patent attorney (unfortunately FA's resident patent attorney, divgradcurl*, has been AWOL for awhile now), I can only suggest that you submit either a provisional application or regular patent application prior to making your product public.

There will be more of a legal risk now to marketing your product to the public prior to securing a patent (or having a patent pending), because the new law eliminates disputes over who was first to invent by giving the rights to an invention to the first one to file for a patent.

As a note, the new patent law, changing first-to-invent to first-to-file, puts the U.S. in line with other countries of the world. The patent first-to-file system is similar to how trademark ownership is determined in many countries - ownership of a mark belongs to the first-to-register the mark in most countries but here in the U.S., trademark ownership is still determined by a first-to-use-a-mark-in-commerce system.

Again, it is best if you can seek out a patent attorney in your area or check for online access to the USPTO's public forum on the new law scheduled for Friday.

Good luck.


*note to divgradcurl: Your expertise is sorely missed.

Thanks for the info. I decided to go ahead and file the provisional (that was a marathon...). Got it submitted yesterday. Thanks again for the insite, at least I can sleep a little easier now.

 

[quincy]

You're welcome, bartleby. I think you were smart to submit your provisional application.