A Cinderella Story in the Enchanted Land of Patents

A Cinderella Story in the Enchanted Land of Patents

2/13/2008
On that fateful night, Cinderella knew every magical accoutrement conjured by her fairy godmother would abruptly vanish at the stroke of midnight. In the equally intangible world of patents, there is another 'Cinderella' - a demure, unappreciated, hard-working character that, like the beloved Cinderella, has an unforgiving curfew. I am referring to the Provisional patent application. The gaming industry is renowned for its culture of innovation. Its thirst for new games, new methods and machines, and new management systems seems unquenchable. And innovation has not been a sport of kings in the gaming industry -- new products arise from the grass-roots game developer just as frequently as from the multi-national systems and casino management enterprise. How do creative people and businesses in the gaming industry protect their innovations? Patents are the tool of choice. All innovators - be they rich or poor, novice or veteran - usually approach the patent system through one of two portals: a Provisional patent application, or a Regular (Utility) patent application. The Provisional patent application is often misunderstood, and perhaps for this reason frequently under-utilized. This article will briefly describe how the diminutive Provisional, living under the curse of a strict curfew, can be used to leverage innovations for business opportunity and greater returns on investment. The Provisional patent application was introduced to the U.S. patent system in 1995. It is an optional starting point along the path to obtaining a regular, garden-variety (commonly referred to as a "utility" or "non-provisional") patent and/or international patents. By itself, the Provisional patent application cannot stop infringers. It is not examined in the Patent Office, and remains secret throughout its brief existence unless revealed by the inventor. There are few formal requirements to the form or content of a Provisional patent application. As a consequence, it can be assembled very quickly and filed in the U.S. Patent Office to obtain an internationally-recognized patent priority date. Once filed, the invention is "patent pending." Regarding that curfew...Akin to Cinderella, the Provisional patent application can attend the palace ball for 12 months. However, at the last stroke of midnight on the one-year anniversary, the Provisional patent application will automatically and irreversibly expire. The goal of a Provisional patent application, therefore, is to use its brief time at the palace ball looking for a viable suitor - or, more to the point, evaluating the business landscape so that a wise decision can be made whether to convert the Provisional patent application into a Utility patent or International patent(s) before that final chime on the big clock. When is a Provisional patent application the right choice? I have counseled many developers in various fields over the years, including gaming, and find that Provisional patent applications tend to make sense in at least five specific circumstances. Outside of these five circumstances, it may be smarter (and less expensive overall) to enter the patent process through the Regular patent application portal. The five circumstances that tend to favor the Provisional patent application are: 1. The innovation is in an early stage of development. Sometimes, when an innovation is in an embryonic stage, time is needed to consider alternatives, conduct research and test prototypes. Filing a Provisional patent application early on makes sense in these circumstances, because the invention can be improved for up to 12 months under a protective cloak of "patent pending.?" At any time before the final stroke of midnight on the one-year anniversary, the Provisional patent application can be converted into a Regular patent application and/or an International patent application that incorporates all of the technical updates and modifications. 2. The commercial significance of the innovation is speculative. In the early stages, it is not always clear whether an innovation will have commercial merit. Within the fairytale allegory, Cinderella may not be sure the Prince is bona fide when she first arrives at the ball. The Provisional patent application allows the invention to be safely marketed for up to 12 months before deciding whether to invest further in the patent process. If market reception is cold, the patent plans can be scuttled so that good money is not thrown after bad. 3. Money is tight. Because the Provisional patent application is optional, it will add to the overall cost of obtaining a patent. However, filing a Provisional patent application costs only a fraction of what it would cost to file a Regular patent application. When cash flow is a serious factor, end back loading some of the patent costs can be attractive. The Provisional patent application enables the larger expenses associated with patent preparation and filing to be deferred for up to 12 months, while securing an early patent priority date. 4. Time is tight. There are two significant deadlines in the enchanted land of patents: 1) the date an invention is first made public; and 2) one year after the date an invention was first made public or offered for sale in the U.S. If a Provisional patent application (or Regular patent application) is not filed before deadline #1, then all right to protect the invention outside the United States may be lost. The inventor is left with only the possibility of U.S. patent rights. If deadline #2 is also missed, then all right to protect the invention with a patent anywhere is lost forever. Therefore, in situations where deadline #1 or #2 is only a few days away, a quickly prepared and filed Provisional patent application may be the only practical option to avoid losing protection rights. 5. When the business plan is to sell or license the innovation to someone else. Some inventors (many game developers for example) have no intention of making or using their own innovation. Rather, their business plan is to sell or license their invention to an established company in exchange for a buy-out or royalties. These kinds of entrepreneurs want to invest as little as possible protecting the idea up front, with the hope of securing a buyer/licensee before expensive patent decisions must be made. The Provisional patent application is ideally suited to these situations. If a buyer/licensee is found, the future patent costs can be shifted to them or paid from the proceeds. On the other hand, if a buyer/licensee is not found, the business plan can be folded without incurring further patent expense. Undoubtedly, there will be other situations when the innovator is wise to enter the patent process with a Provisional patent application. A qualified patent lawyer should always be consulted. What is the Provisional patent application process, and how much will it cost? A Provisional patent application is usually filed with a collection of illustrations (hand sketches, screen shots, photographs, etc.) and accompanying text that describes what the invention is, how it works, and what the illustrations represent. As a general rule, more text and more illustrations are better. In my practice as a patent lawyer, I file somewhere around 50 Provisional patent applications per year. In more than half of these cases, I ghost write the Provisional patent application for the inventor; whereas in the remaining cases the inventor chooses to draft the Provisional patent application - to save money. The more lawyer time required, the more it will cost. There is also a government filing fee to consider. At the time of this writing, the filing fee for a Provisional patent application is $210, with a 50% discount extended to individual inventors and small businesses. This government fee combined with t
  • EMAIL
  • |
  • PRINT

RELATED PRACTICES: