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How to Write Provisional Patent Applications | Invent Anything with John Cronin Episode 25

39m 37s

How to Write Provisional Patent Applications | Invent Anything with John Cronin Episode 25

This episode focuses on creating high-value provisional patent applications and their strategic advantages. A provisional application is a low-cost filing (starting at $75 for micro entities) that secures a priority date for one year, allows "patent pending" status, and remains confidential until the related patent issues. However, it must contain enough technical specification to support future patent claims. The speaker identifies various types of provisionals, such as DIY (risky), thesis (often too broad), two-page concept (may lack detail), patent-like (recommended for reliability), file drawer (can over-disclose), copy (may create prior art), and prior art provisionals (filed to block competitors). Best practices include using a solid specification with at least one claim and filing a patent application as a provisional for seamless conversion. Strategic uses are numerous: securing an early filing date, loading multiple provisionals before M&A or fundraising to boost company value, protecting information shared under NDAs, quickly filing after accidental public disclosure, covering the value chain (suppliers/customers), rolling provisionals to extend the one-year deadline, and filing twin provisionals (one short, one detailed) for future flexibility. For small companies, provisionals offer affordable IP leverage, while large companies can integrate them into innovation processes to accelerate patent positioning and competitive blocking.

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Welcome back. Today we're going to be discussing creating the best in class provisional applications and how you can leverage it in many ways for all the strategic advantages they have. So today in this episode we will cover provisional's a powerful weapon bringing business value versus what most people would just consider sort of an esoteric process with the baton office. Today we'll cover six topics. The first topic is what is a provisional application? We'll go a little bit more in depth than just the normal stuff of course, but we'll talk about what that is. And topic number two we'll talk about the many types of provisional's and you might be surprised by this. And topic number three, the various strategic uses for provisional's and we can't cover them all we'll give a snapshot of 10 or 12 of them. And the topic number four we'll talk about how provisional's can provide very unique leverage. The topic number five we'll talk about other things to consider using provisional's if you're a medium or large-sized company. And the topic number six we'll talk about other things considered using provisional's if you're a small company. And then of course we'll wrap up. We always talk about the audience. So if you're one of the audience participants who when you're thinking about provisional's you really don't understand what they are this is for you. For those folks in small companies who want to get a lot of leverage out of intellectual property this is certainly for you. For those in large companies if you want to expand your innovation practices this is for you and this is an important thing for large companies because they don't consider provisional's part of their innovation practice. Also for those who want to understand the dozens of uses of provisional's those who want to understand the many types of provisional's are available. Basically for an audience here for those who might want to leverage their patent council or maybe save money or work better with patent councils. And also for an audience perspective for those who want to leverage things like your R&D practices, the NDA practices, engineering notebooks, and all sorts of related processes. This is John Cronin invent anything coming up we'll learn a lot about provisional's related to bringing the value to your business and most of all get educated and know how many different types of provisional's there are. Inventions keep the world spinning from fire in the wheel to today's high tech inventions power change. Turn your inventions into reality. Learn how to get your ideas to market. This is invent anything with John Cronin. So let's dig in. Top of number one, what is a provisional? Well in the dry sense a provisional application provides a filed application with the patent office which is really a filing date and the idea is to have the provisional start at the data filing where the provisional needs to be converted to a patent within one year of the time frame when it's filed as a provisional. But a second point a provisional patent application reserves this filing date for that time of the idea and it will meet all requirements of the USPTO. But thirdly and very interestingly, provisional's are not examined by the patent examiners and they do expire after a year. A filed patent application can use the priority date of the provisional meaning that when a patent is filed within one year of the provisional you can use the date of that provisional and as long as provisional application contains enough technical specification to cover the claims of the patent application then the priority date of the patent application will be the provisional application. So that's great news. One of the great things about provisional is that they're cheap $300 for a company, $150 for a small entity and even $75 for micro entity. What is a small entity? These are really small business concerns that 500 employees less could be universities, could be nonprofits. And if you want of those and also have greater than four patents filed you can apply for a micro entity for $75. One of the great things about provisional is that you can use it patent pending. This is so cool for your marketing campaigns to file a provisional and just be able to say patent pending. The provisional can have five or ten pages in it and submit it for low cost and now you can say patent pending. That's super. One of the nice things about a provisional is you don't need a lawyer to file it. If he is just a filing fee if you want to write it up. One of the things though since there's no requirement for who's writing it up, you have to be aware because if you just write up something and we'll talk about this that won't do anything for patent application down the road then why bother. One of the things about a provisional application is it's cheap to obtain and if you have the level of quality in it that a professional might give it can be very powerful for obtaining a patent. And finally one of the cool things about a provisional is it stays hidden. Until the patent is opened up and allowed. That what this means is that someone can see your provisional if your patent you know after 18 months is in the patent office. So if you file a patent on the provisional then 18 months later the patent lays open when the patent files and issues the provisional lay open. You don't have to do that until the patent gets issued and we'll talk about the reasons why you might want to keep provisional kind of secret for as long as possible. Well let's jump in to topic number two the many types of provisional. Now I've been working in my firm for 25 years filing provisional and done this for years before that when I was at IBM. I've seen many things when it comes to provisional filings. I've seen it for many different companies but we're 1500 companies. I've seen many different patent attorneys who work with hundreds and thousands of those different firms. So we've seen a lot of different types of provisional. So as a person that has this kind of experience I can say that there are many types. What do we share some? First of all I'm going to give these kind of labels. These labels are not in the patent office these are just labels I'm giving them so you can differentiate. So one type of provisional is to do it yourself provisional. It's really not recommended. I mean what you might do is just file something figure out how to fill it out on the patent office form. Submit the form pay your fees and you're done. But that may be a total waste of time and money unless of course you use in the patent pending thing because there's certain things you have to have in the provisional so that it can be used to secure the date of the patent filing which is the whole point of provisional. So to do it yourself you have to be very concerned if you do that that you might not have enough information in the provisional to get a patent. There's a provision I call the thesis. We've seen a lot of these. What happens is that some company small company or independent inventor will create 50 100 200 pages really a thesis of information hoping that when they file that as a provisional that that will be a whole substance body knowledge that you can use to file the patent later on. The problem is a lot of those body of knowledge that you might put in might not suffice for the enablement need for the patent application. But of course we can see that but we did talk about enablement in episode six so maybe if you go to episode six and listen to that then that would help you to figure out even in a large body document like a thesis how it will work. A lot of companies we see filing what I'll call the two-page concept or invention disclosure. A lot of companies small and big have an invention disclosure which is just a couple of pages what's the problem what's your solution you know what do you think the novelty is what do you know about the prior art and then you file that as provisional. Many times this two-page concept file is provisional still will not have enough specification in it to suffice as a good background for the patent application so you need to be careful. One of the things that we do is to make the provisional look like a patent and I think this is kind of best process and this is kind of what we do. It's a process that does cost money because you're bringing in a professional certainly less than a patent and in it you have great figures great diagrams title abstract also to information about the specification in at least one claim. It's more expensive but you now can rely on the provisional as looking like a patent you don't have to pay the patent fees but a provisional fee so you're saving a fair amount of money to file the provisional but the provisional is right so you can always rely on being converted to a patent. Another type of provision we've seen I called the file drawer and basically what happens is that somebody's taking all the related documents that they can find for business for marketing from technical notebooks and they're smashing it all together and sending it to the patent office for provisional application. Problem with this is at the end of the day the provisional gets laid open if you want to maintain the date of the provisional being the date of the patent. If that lays open this file drawer lays open you may be over teaching and divulging so much more information than you ever hope to have done. Things like cost estimates or marketing campaigns from the file drawer so be very careful with this sort of file drawer mentality. Now there is a type of provision we've seen which is kind of interesting it's called give it the name the copy. So what happens is you end up copying lots of information from the internet you get on Wikipedia and you start getting on websites and extracting information putting it in a massive word document hoping that all this information gathering will light have huge flexibility in the patent that you'll file from the provisional. Well again one of the problems is this is that this could backfire. You could literally be creating prior art for yourself by showing all this information and connecting it. So we certainly would not recommend this sort of copy provisional mentality. One of the things that we've seen which works excellent is using the provisional as a a first file document. In 2013, the American Event Act changed from first to invent the United States to first to file. And with that means it's a race to the patent office. So if you're using provisional documents in such a way to get speed to the patent office, that type of provisional is really well sounded and highly recommended. A couple more. One of the types of provisional we see is a very solid specification with one claim, which I mentioned before, which is our practice. But this actually really looks like a patent document. The only thing left is more claims. And of course, this would be highly recommended as well. So both having a solid specification with the least one claim is very important, but you could file a patent application as a provisional. It's not a patent. You won't pay the $6,000 fee. It looks just like a patent. You file it as a provisional. And at any point in time, you can click a button, pay the fee, and move it on as a patent. Now, there you're paying a lot more money for the provisional filing, but you're obviously ready on that date that you want to send it to the patent office. You have to go through a patent attorney a second time. Finally, the last statement, provisional, like to talk about, it's called the prior art. This is a really almost sneaky thing to do. Basically, it's recognizing that the provisional is going to be information that when late open, examiners will be forced to look at it, meaning that they'll search through a patent office and look at this provisional as prior art to another patent. So you could file a provisional with lots of information and lay it open immediately so that examiners have to look at it. So what's happening is you're supplying prior art directly to the examiner. And why would you do that? We've talked about this before and a number of sessions that prior art could stop somebody else getting a patent. And that's a wonderful strategy for you. So come up, coming up, believe it or not, there are dozens of strategic uses for provisional and for small companies, provisional could be a life saver. You're listening to invent anything with John Cronin. Be sure to visit us at inventanything.net. There's information, articles, and more. And you can leave your thoughts and comments there as well. That's inventanything.net. And now back to John and this episode. So let's move on to topic number three, strategic uses for provisional. And again, I've provided some sort of labels as a way to talk about this as basic uses and things like that. So the first sort of strategic use of provisional is I'll call the basics. And the basics is this is the cheapest way to secure the date of an invention and to set yourself up for patent applications. So provisional are a great way to set yourself up without going directly to the patent application. There is this sort of overall strategic use of provisional, which I'll call provisional loading for M&A or investors. And what this means is say a month or two or three or four months before you're going to be raising money or being acquired. You look at your portfolio areas strategically and maybe you file half a dozen, a dozen, two dozen provisional and get them on record. Now you can be able to say that you have 12 or 13 or 15, you know, provisional applications files. And part of the raise could be that they'll pay for the patent applications. What a great way of instantly creating value for your company. To put on the book, she had 10, 12, 15 provisional. We do an awful lot of this kind of work, release stage companies and even companies that are large want to get a real position very quickly. And one way to do it is to get these provisional. But again, these provisional have to be well enabled. And we talked about that in episode number six. Another thing is using provisional's for the topic of protecting yourself in an M&A situation or in an NDA situation. And what do I mean by that? Well, you know, you get an NDA with a company and the first thing you want to do with that NDA is to make sure that it's going to protect you. What a great thing to do is before you get in place with an NDA, if there's something very special that you think you're going to do, then you might want to file provisional or to on it. That's a better protection than an NDA. So getting provisional's in plus the NDA is the strongest you can apply for. Another thing is we meet a lot of companies where they're small and they're being acquired. There's someone's looking to be acquired. A larger company will come in and investigate through the diligence process. There's a high level of interest. Everyone's excited. Maybe there's a lot of money involved. But a lot of M&A sort of diligence is sort of evaporate. The large company decides for some reason that it doesn't want to acquire. And later on, some of these large companies appear to have the technology that you have. And there's always this kind of remorse that maybe you gave away too much information. So if you're going to be sort of assessed for an M&A, you should run this and try to get as many provisional files as possible for the M&A. Because if you do that, if someone investigates you in a diligence, they can't just walk away and start copying you. As a matter of fact, in the M&A, the diligence, you'll show the HF15, whatever provisional and that'll get them concerned. But they'll have to be highlighted to know that they can't basically take the technology if they decide not to buy you. Another thing, and this is a great use for provisional is it's sort of getting a quick position. What do we mean by getting a quick position? You might be worried that you're divulging some information to somebody and it could even be you divulge it under NDA or you divulge it at some sort of meeting. Well, it's very interesting. In the United States, you can actually divulge the public something and invention. And you have up to one year to file a provisional to cover that invention and to meet the requirements of having the ability on a patent. You lose the rights in the rest of the world, but at least if you divulge something kind of because it was a mistake, or because all of a sudden you divulge something and all of a sudden the other side said, this is really important. I'm going to go do this. And all of a sudden, what do you do? How do you fight? You file a provisional. So getting a quick position is really important. Another aspect of provisional is I'll call it value chain provisional. Your value chain is things like your suppliers and things like your customers, correct partners, etc. All the ecosystem around you. A lot of times when you're talking about what you're doing, how your technology works and how the product works, what you find out is others will start to have insights that maybe they can improve on the supply to you and they'll get inventions there. Or the customer may say, if I get this from you, maybe I can improve it and get patents there. So what you can do is file provisional in the supply side or on the customer side. So what you're doing is you're covering someone from copying or improving your idea or any other side of the value chain. This is really tremendous when you using and filing provisional like this and later on maybe converting to patents because you can leverage it in the discussions with the suppliers about the cost of their supplies because you want the IP or with the customers that you own the way they're going to use the inventions and therefore they have to use you. One of my favorite tricks in provisional is called the rolling provisional. The rolling provisional. So we mentioned this year filing date. Well, the year filing date, you know, maybe you're coming up to the 10th or 11th month. Maybe the market hasn't changed that much. You don't want to really spend the seven or eight or $10,000 more to convert that provisional to a patent, but you don't want to lose your date. So what do you do? You can take that same provisional and refile it as a new provisional. Now what will happen is over the next month or two, you still have the date of the first provisional. But once you cross that date of the first provisional, you have now moved the date of the earlier filing to the second provisional. But this rolling provisional effect is very useful because it's not either or thing. It turns out that it may not be prior and it might not be interesting the technology even within that year or two or three. So we've seen provisional's role for one, two, three, four years. As long as the technology is not known, this is a very effective strategy. One of the interesting things about provisional is another technique called the twin provisional, the twin. Well, these aren't exactly twins. I mean, there are twins that are identical twins and there are twins that are just born at the same time, but they're not identical. So these are kind of twins born at the same time that are not identical. What do we mean by this? So I'll just give you one example. There's many, but I've had you filing two provisional separate documents at the same date. One provisional is very short, very succinct, and surrounds exactly what your invention is. The second provisional is a copy of the first provisional, but a whole bunch more subject matter that you could do for continuations. Why would you do that? Because now at some point, you are going to file a patent application and point to the provisional that references the date. Is it going to be the short provisional or the really embellish provisional? Well, if you suspect that you don't want to teach too much because you've now waited a year, you might do the short provisional. On the other hand, if you've seen the technology really emerge and you want to get lots of continuations, you might decide to file the provisional, provisional is packed. So there's ways to doing this in combinations of these things, the digital, I mean, the twin provisional or the rolling provisional using them together as sort of a hybrid. We mentioned, of course, another use for provisional is the patent pending play. So once the provisional is filed, you get to use the patent pending. Boy, think about it. In a competition with things are fast and you have competitors, you could literally see what they do. File a provisional, get a patent pending and put that on your website. Now your competitor doesn't know what to do because you get a patent pending on their product. Now, again, if a provisional is ever going to be used, it'll be based on the filing date. If it's going to be converted to the patent, you're going to find a sign of oath of declaration for the patent, meaning that you're going to have to divulge what what prior out you knew at the time. you filed the patent or the time you filed the provisional because that's the date you're relying on. And you may have to talk about that competitive product as being prior art. So there's really no free lunch. And the last one I'll mention here is provisional bet hedging. Provisional bet hedging. Really you're creating a bet in your business using provisional. And there are many ways you might want to place a bet. So maybe you have a new idea of a new technology direction. Maybe one of the business issues is you need a race to get ownership. Maybe it's going to be a good direction. Maybe not. So you start filing provisional because they're cheap. They're a couple to three hundred dollars. And maybe five or six thousand dollars you create a really good one. Whatever whatever it is. And now you can use this as a business tool. You can hedge the direction of various technology. Maybe you have four choices of technology. You're going to pick one. All provisional is on all four. Hedging you bet. So topic number four. How provisional can provide very unique leverage. One of the ways that provisional can provide very unique leverage is of deciding on when or not to use trade secrets. You see you could file a provisional with a lot of information in it. It could become a patent. You might want to keep it secret. So you get to decide that within the year. So if you have something that you think is kind of trade secret but you're not quite sure, if filed as a provisional and if you're really at the end of the day, you say to the ZZO trade secret, you just don't file as a provisional. But a wonderful way from small amount of money to actually give you maximum leverage or IP strategy. Here's one. I call it the employee lock up. You know, being a CEO of four or five companies in my life and dealing with CEOs all the time. Eventually because of the problems with employees employees that claim that they own something and really they may or may not. So by having them create a provisional with their name on it to file for you, well actually surface whether or not this is going to be a problem. Because you think you own it and they don't think that you own it. You ask them to file a provisional. You'll actually really figure out whether they think they own it or not. Nothing about a provisional is you could quote "only art". So you could file dozens of visionals cheaply. Then later on file some patents. You could file a patent on three provisional's concatenated together. That's really cool. You could file another patent with two or three different provisional's concatenated together. So as I mentioned, one of the new areas that we could talk about is aggregating a bunch of provisional's together to create various types of patent applications. This is a really powerful strategy. But what we mean here is that you could file say 10 provisional's as an example. Nine months 10 months, you decide you're going to take provisional one four or five, combine them together and that will be the basis of a patent. Maybe you take provisional two and six and eight, combine those and file those as a new patent application. What's really neat is you create provisional's on these little pieces and you can aggregate them together for very unique combinations. This is a very powerful strategy to give a maximum patent strategy, giving you a year to figure out when you want to patent and what. One of the things is that you can use provisional's as enable publications, meaning you just create a provisional and figure out a way to really enable it well and lay it open. Now the examiner is going to use it as prior art. One of the key uses of provisional's and we see a lot of this. We strongly recommend this is before there's a key meeting. The word is before there's a key meeting that's technical. You file a provisional because if you go into the meeting and they're both sides you're discussing something, you know, say you want to you want to be a various partner. If they say they own it, you can easily dispute it because you filed a provisional before you had the meeting. One of the things about provisional's is and this is something we haven't seen a lot of but been kind of my dream of working with companies is a treat provisional's almost as an engineering notebook since provisional's are so inexpensive. Maybe every six months engineers who have notebooks they could take you know groups of 10 or 15 to 20 pages and file them as a provisional as long as they're enabled. What this does is gives you an engineering notebook that at any point in time could be converted to assets that you own and that's tremendous. We have because we do a lot of monetization of patents found out that if you want to sell a license patent it's great to kind of before we do that work is to quickly build a half a dozen provisional's surrounding the improvements and the event on tops and event around so now you're selling that one asset plus six more provisional's it's cheap and it's a powerful way to raise the value through monetization. We mentioned how provisional's can be used by your marketing team but if we think about it you can actually enhance your marketing campaign. If you look at your marketing campaign you want to beef it out. Maybe you could file some provisional's in certain areas so you can have patent pending and claim that you're the innovator. And finally this is a race to the patent office it's a first to file world so it's really important that you look at provisional's as one of the unique competitive weapons to own the market before anybody else by racing to the patent office. So coming up we're going to learn some best practices of how many medium and large size companies might be able to leverage provisional's and even how we can leverage your legal team to help you save some money. Be sure to visit us at inventanything.net there's information articles and more and you can leave your thoughts and comments there as well that's inventanything.net and now back to John and this episode. Topic number five other things to consider using provisional's and this topic covers if you're a medium or large company. So one of the things is that if you're a public company maybe you can use provisional filings as a way to enhance the stock value. We've seen this public markets respond to changes in asset values of companies so maybe you could file some provisional's on a key new technology a buzz word if you will. Quants and computing used for something or NFTs used for something and you file those provisional's because of a matter of record you put the title out there they don't exactly know what it is but then the street actually sees that you're innovative. One of the things to do that we've seen with large companies and medium-sized companies is using provisional's and then laying them open for free to operate. What this means is that if something gets out in the prior art then nobody else can get a patent on it. So this is a wonderful way of getting a free to operate of a particular product. We have filed the provisional lay it open. When I was at IBM we had the IBM technical disclosure bulletin and our inventions that we wanted to publish were laid open with an IBM technical disclosure bulletin while most companies don't have a technical bulletin that's red worldwide like IBM did so provisional's are a great way to have free to operate. Look a lot of companies that I work with at a large might have a very bunch of different innovation processes. One of them is well known as stage gate with Cooper's and Hebert. We have filed various stages of product production and innovation. One of the nice things is to various gates of the stage gate you could file provisional's as one of the key items in order to ensure you went through that gate correctly. We've had a way to figure out what are the most important assets you have filed them as provisional's as a hard directive of a stage gate. A lot of companies have R&D projects going on all the time. A great thing to do is we've got an R&D project. It's cost some sort of milestone out say three months from now when something gets done and say at this milestone I'm going to review the project and we're going to file the key provisional's or the wonderful way of sort of adding good IP simple-minded strategy to your R&D. And the same is true of brainstorming. You do a brainstorming process and you basically come up with ideas that would be great to list the ideas and be great to pick the top five. It'd be great for someone to say look we want to make sure these brainstorming sessions are important. So at least let's file the top two or three ideas we have as provisional's. This way what you're doing is making the brainstorming session creating assets. So the brainstorming session becomes even more valuable. One of the things we've seen with a lot of large and medium-sized companies is the patent council is under a tremendous workload. So one of the things we do to help them is to file provisional's giving them some optionality, giving them another year to determine whether they want to file a patent or not. Now they should know that they can file provisional's in patents just like us. But a lot of times filing provisional's could actually come from R&D and technical management versus the patent attorney's group. And so patent attorney's working with the technical business people can create a provisional's process that might help with the workload. We mentioned before the NDA issue and how important NDAs are to companies. But one of the things that large and medium-sized companies could do to improve their position because all these NDAs just end up in electronic file cabinets and they're really not relevant until you actually need them for something very important. But if you get in the habit of filing provisional's in front of key topics or key meetings or key relationships, then you have a secondary way and more specific way to manage your confidential information. On a consultant, lots of companies hire consultants. One thing you could do if you hire consultants is to try to figure out a way if they think they have inventions, is to ask them to file provisional's that you'll pay for for them because you have work for hire. This is one way to make sure that you have the inventions they created for you on your nickel. One of the key things I mentioned employees, but nothing is better than if you have an exit interview with a client, I mean, of an employee. You can ask that employee to file their provisional's, you know, catching up their work before they leave. So they have two to three weeks where they're trying to move out anyway, asking to write some provisionals up on what they're doing. That's a great way of capturing what they own right before they leave. But the last areas I'll mention for large companies, middle size companies is capturing the white space with provisionals. A lot of companies kind of do roadmaps and marketing, patent analytics and technology scouting and all sorts of stuff. Where from these studies, they talk about white spaces, areas that are truly areas for innovation. Maybe six months from now, that report is gone and you forgot what the white space was. It'd be great to tack on to any kind of white space analysis that the result of it will be to make sure that in some of the white spaces, we run a brainstorming session or two and then file some provisionals. See, in these cases, what we're doing is we're using provisions. It's just a business tool or sort of innovation tool, if you will, in order to make the results of the innovation to be more robust. Well, yeah, I'll tell you if something really important comes up and you had filed a provisional and that turns out to a really important patent, you'll look like an absolute hero for doing it. Cost is cheap, not a lot of time. So why not do it? Let's move to topic number six, the final topic. These are other things to consider using provisionals like before, but now you're a small company. And like I said earlier, some of this stuff could actually save your company if you're an only stage company. One of the key things you can do is get good at filing provisionals and you can really head your bet that you could own this and you're saving the cost of a patent attorney until you really need them. So maybe you'll file 10 provisionals, but later on, you only file two patents. Instead of having a patent attorney involved in all 10 of them, you just involve them in the two. But this means that you'll learn how to write up a good provisional once you go back to episode six, which teach about enablement, because that has to be in the provisional. One of the other things about provisionals, which you're also very neat, is when you do hire a patent attorney for a small company and you want to produce a patent application, go through the exercise of creating a provisional. And by setting a provisional to the attorney, instead of him starting from ground zero, he's starting from a good write up. And so whatever his fees are going to be, you'd probably knock them down by half because you spent the time writing the provisional. This is not rocket science. There's a formula on how to write this. Once again, episode six should tell you how to do this from an enabling standpoint. If you're a fairly stage company, one of the cheapest things you can do to start an IP program is to start following provisional. And we highly recommend this. One of the things if you're a really stage company is, you have a business plan, business market product technology. You can just look at those charts and figure out where you might have inventions that you want to apply for provisional. And then lace your business plan with provisional filings to make you look like a truly sophisticated IP startup company. One of the things that I've seen quite a lot is founders working together. It's all exciting when you start the company together. However you do that. My hat's off to founders to actually have the guts to go do this. But supposing you're a founder and there's two or three other founders. And then supposing like lots of happens, there may be some new revenues, some new investments and things to start to move on with the company. There always becomes a battle to after question, well, who really was the founder? Who really created this? This becomes a whole bunch of negative discussions, in my opinion. However, if you decide to start a company and you really are the founder, if you follow some provisional's first, before you discuss what you want to do with other founders, you will really be the founder. A lot of times, you know, really stage companies have angel investors or other types of investors investment. And if raising money is difficult for you, you might consider following some provisional's because now you've got some assets that they can always rely on if the investment doesn't go the direction. So for early stage companies, you're very stages of your company. You know, you hire two people, you hire four people, you revenue is one million, you revenue is two million. So you're growing. You should get in the habit of following provisional's at various stages because there's always new innovations tripping through these various stages. So get into that habit. And therefore you can always have a very good IP strategy. I've been on a lot of boards myself, chairman of a number of boards, well public and private. And I can tell you, board members like to have exciting news. There's always lots of problems to solve, but it'd be great to have some exciting news. So one of the great things you can do is a CEO or a CFO, we're about to have some board meeting is to follow some provisional's about the new stuff. Again, because it's so cost effective. And it shows by documentation that you actually think you own this stuff. If you as an early stage company it's gonna have a significant business meeting with a customer or investor. You might wanna be following some provisional's before that meeting to bolster up your position to embellish that you're an innovator. And is the last one I'll give you from the perspective of an early stage company of how provisional's can be important to you? Well, you've seen a number of situations where investors and the company are not seeing eye to eye. The investor wants to wind down their interest, pull the funding, or they wanna exit. Maybe there's two investors and one wants to exit. Maybe some investors actually think that whatever happened in the company was incorrect. There could be some investors that would be so negative that they could be threatening to sue you. There's a lot of stuff happens in business. Well, the great thing about provisional's is that if you have a negative investor, you could file some provisional's and basically provide that as an asset and use it as a trading card. Say, look, we'll give you the inventions up to this point. You take the rest of your money, don't sue us whatever, and you'll have the provisional's, that means that you can convert into patents and you can own this technology. Well, as long as you give us a license back if you ever file the patents, but why would you do that? 'Cause it's always gonna be more invention. There's always gonna be improvements and you can get new provisional's and new patents in the future. But it's a great way to kind of exit a negative and better, a negative investor. Well, let's wrap up. In the previous topic, we talked about what a provisional application is. If you recall, it was all about the filing day. First to file, you don't need examiners. Cost is low, being able to use patent pending. A lot of uses about a patent application and what it is. In topic number two, we talked about and discussed the many unique types of provisional's like the thesis, like the file draw, like the prior art or the person that copies Wikipedia and puffs it up. But we hope that each of those ones that we talked about, that if you go back to the most important thing that the provisional's need to be enabled, who cares how you get the information in? So that episode six in a enablement would be a pretty big one for you. We talked about in topic number three, strategic uses for provisional's. We discuss many different uses from the basics, assisting with NDAs or M&As, leveraging the sale of patents, rolling provisional's, the twin, provisional bed hedging. A lot of different ways to use strategic uses for provisional's. In topic number four, we talked about how provisional's can provide very unique leverage. This is pretty important. They talked about how you can leverage and hedge things like trade secrets, how you can control employees. This might be the greatest thing to figure out how to pick and choose, you know, for the filings. We discussed all sorts of things from hedging trade secrets, employee control, how you can use them as prior art, how you can leverage multiple provisional's at one point in time and pick and choose various ones to file patents. We discussed all sorts of ideas. Like you know, we had to use provisional's as a engineering notebook, a very strong engineering notebook. In topic number five, we talked about how large companies and medium sized companies might be able to find other uses for provisional's. We talked about how we could leverage their innovation practices on microcaps or public companies, but generally small companies could use it in their stock and raise the value of the stock possibly. Using it for free and operate. We talked about using it for R&D processes like stage gate or even using it to fill employees with exit interviews to figure out how to make sure you know it, you own before they leave, or even how you can use this in whitespace analysis or using it as a very strong practice for brainstorming as a way of sort of tallying up what the inventions are for the brainstorming and R&D. So large companies and medium sized companies have a lot of unique uses for provisional's. And finally, we talked about small companies. You know, what is the uses for small companies? There are many things here. You're dealing with patent councils, ways to save money, ways to start your own IP program, way to handle founders, ways that you can use it to even handle unsatisfied investors. So many different uses for provisional's for early stage and small companies. Well, if you like what you're here today, please subscribe. And if you like, come join us and invest anything. And also maybe take a look at our inventors at work where we interview inventors about their work. Thanks very much. [BLANK_AUDIO]

Podcast Summary

Key Points:

  1. A provisional patent application secures a filing date and allows "patent pending" status at low cost ($300 for large entities, $150 for small, $75 for micro).
  2. Provisionals are not examined, expire after one year, and remain hidden until the related patent is issued.
  3. There are many types of provisionals, including DIY, thesis, two-page concept, patent-like, file drawer, copy, first-to-file, and prior art provisionals—each with different risks and benefits.
  4. Strategic uses include securing invention dates, loading provisionals for M&A or investor negotiations, protecting against NDA breaches, getting a quick position after public disclosure, covering the value chain, rolling provisionals to extend the year, and using twin provisionals for flexibility.
  5. For small companies, provisionals offer leverage and cost savings; for large companies, they can expand innovation practices beyond traditional patent filings.

Summary:

This episode focuses on creating high-value provisional patent applications and their strategic advantages. A provisional application is a low-cost filing (starting at $75 for micro entities) that secures a priority date for one year, allows "patent pending" status, and remains confidential until the related patent issues. However, it must contain enough technical specification to support future patent claims.

The speaker identifies various types of provisionals, such as DIY (risky), thesis (often too broad), two-page concept (may lack detail), patent-like (recommended for reliability), file drawer (can over-disclose), copy (may create prior art), and prior art provisionals (filed to block competitors). Best practices include using a solid specification with at least one claim and filing a patent application as a provisional for seamless conversion.

Strategic uses are numerous: securing an early filing date, loading multiple provisionals before M&A or fundraising to boost company value, protecting information shared under NDAs, quickly filing after accidental public disclosure, covering the value chain (suppliers/customers), rolling provisionals to extend the one-year deadline, and filing twin provisionals (one short, one detailed) for future flexibility. For small companies, provisionals offer affordable IP leverage, while large companies can integrate them into innovation processes to accelerate patent positioning and competitive blocking.

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