Questions

Can a provisional patent act as a catch-all?

So we're working on a niche social network. A lot of the features are general features used in all social networks, but we have a few unique features. We don't have the resources to file actual patents, so we're just going with a provisional. Should I file individual provisionals for each feature, or can I just file one overall provisional for the whole app and make sure to highlight the individual features I think are patentable in the future?

3answers

A provisional patent is good for two things. It is a date-stamped proof of invention and gives you time to determine whether to incur the cost of filing a full patent. Yes, so long as the individual component pieces you think are useful are sufficiently described in detail within the one general application, it sets you up to later claim utility patents for any and all of these, providing they really are unique.

But in general, I would really caution you from spending time and money to file patents for a software company. I've built many innovative software products over 20 years of work in our industry and only filed one patent in my life, and even that patent is only to protect people from abusing a truly transformative and world-changing technology.

That said, a provisional patent is inexpensive and if any expense is going to be incurred here, a catch-all is sufficient if you feel inclined to file anything at all. If your goal is an acquihire or acquisition, utility patents do actually make a difference in the acquirers valuation (at least for now) but if you're thinking about it from an actual defensive perspective, I'd really advise that it's not worth your time (and distraction) and money.

The best defence is a great offence. Scale up, get great engagement from users who love your product and you'll be in a much stronger to fight competitors.

Lastly, if you do decide to file a provisional patent, don't claim to anyone that you have I.P. You don't. :)

Happy to talk through this in a call with you. Best of luck!


Answered 6 years ago

I've got six utility patents in four separate industries - not all patent attorneys are created equal. You should find a patent attorney who has done work in your area of desired patent protection. Not only have they written patents in that space, but have they successfully prosecuted patents in that space?

As for patent-pending...it's true that you need to file within one year of making a public disclosure, but how you file the Provisional Patent Application (PPA) will depend on your determined course of execution. If you simply want "perceived ownership" for one year then as a micro entity a PPA costs $65 to file and no one will look at the PPA.

However, if at the end of one year you decide to file a utility patent you will only be able to claim the benefit of what was disclosed in the PPA. This is where many inventors shoot themselves in the foot! If you have every intention of getting the utility patent then you'll need to write your PPA with the same level of detail as you would write your utility. Usually, when inventors learn this they skip the PPA and go straight to filing the utility.

I don't know your business but if you're not going after a licensing play then you might ask how better you might spend $10k - $100K in your business other than on patents? My patent strategy is VERY different today than how I operated 10 years ago.

Clear as mud? Good luck. :-)

PS
If you'd like to call me and discuss further I will educate you on what strategies are available that would be the best fit for you and then help you craft and execute your strategy.


Answered 6 years ago

Yes. Put everything in one provisional, if you can. But the provisional is worthless unless you file a non-provisional within a year of filing the provisional. Make sure to put as much detail about 'structure' as you can (computers/servers, memory, hard drives, processors). Because you likely will be filing business method claims later on, the structure will be necessary to the claims.


Answered 6 years ago

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