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Patent Tips

A good precaution in protecting the invention prior to filing an application is to send a Disclosure Document to the U.S. Patent Office along with a check for $10.00, under the Disclosure Document Program.

This document should contain a description of the invention and will be held by the patent office for two years and can be cited in a subsequent Patent Application and can be used to prove the date of the invention. There may be prior notebook entries that, if properly witnessed, can prove earlier dates of the invention (if they contain satisfactory descriptions of the final invention). (Sending a description of the invention to yourself in a postmarked, sealed envelope is not recommended.)

Even after steps are taken to document the date of the invention, the invention should not be disclosed in non-confidence, otherwise the one-year clock for a formal Patent Application starts, and foreign patent opportunities are immediately lost.

Note that diligence must be proven if requested, otherwise the rights to patent may be lost. Diligence can include reduction to practice, or making tests, prototypes, and/or improvements. Written, dated proof is recommended.

Filing a Provisional Patent Application, (PPA) or a Regular Patent Application (RPA) is considered as reduction to practice.

Note that currently, in the U.S. the patent goes to the First To Invent, while in other countries the patent goes to the First To File.

A Provisional Patent Application may be filed with the U.S. Patent Office in a much simpler form than a formal Patent Application. The filing cost for a small entity is only about $85.00. This simple application permits the claim “Patent Pending” and is good for only one year if it is to be used in a subsequent patent application for this invention. In order to be valid, the application teaching must provide enough information so that someone skilled in the art may be able to make the invention without undue experimentation. This means that there must be full disclosure.

In the provisional application, much material needed in the actual application is not needed, and this reduces the effort. Postponed to the actual Patent Application can be material such as the background, abstract and the claims. In general a formal patent attorney should write the claims because the wording is very important and must comply with the requirements of the Patent Office. Strong claims represent the major protective value of the patent.