for u.s. utility patents
- There is no such thing as a provisional patent. There is only a
provisional application for a completed utility patent, the latter of which must be filed within
one year of the provisional.
A provisional is a promise to file a patent, and if properly written can
give the inventor patent pending status for much lower expense, and without
the initial need for a patent lawyer.
- A provisional application is also like a bookmark, in that it holds a
space for the anticipated patent application, and because of this, it must be constructed
with as much attention to detail and clarity as with a full patent application,
except that it doesn't require legal claim language.
- A provisional is a less expensive means to start the patent protection
process, one which allows the inventor to disclose their invention to investors
or even to the public, with little fear of losing their rights to their
invention, such as can happen if a third party files an application derived from
- Since Canada has treaties with the US and over 140 other countries to
respect each other's patent laws, if a Canadian files a provisional in the US,
then a full US patent application on time, they have a limited opportunity to file a
corresponding Canadian application with the same priority date. This
method ensures that anyone you disclose your invention to in Canada is legally
liable for an infringement lawsuit if they were to attempt to sell or make your
- Therefore, Canadians can avail themselves of the US provisional
application system to file for patent pending status in the US, and if their
product is a viable prospect within the year, they can protect themselves in
Canada by filing a corresponding Canadian patent application, and retain their
original US provisional priority date in Canada.
- For a detailed explanation of the provisional application, review the
- Since 80% of Canadians file patents in the US, it is natural to start
with the larger market, and a provisional application is the means to safely
test the waters with a new product. If their product is unsuccessful, they have not spent tens of thousands
of dollars with a full patent application, and have money remaining to try out
other inventions on the market. Provisional applications have been adopted by a number of countries who
realize that it increases filing efficiency & protection, reduces initial costs,
and encourages innovation.
- Writing comprehensive provisional applications which enable complete
patent filings is the primary task of
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- The examination phase of the patent application process almost always
necessitates that a patent agent or lawyer represent the inventor during
these negotiations. Lawyers are current in patent law practice, and are paid to
understand strategies that can prevent costly mistakes. Inventive Solutions is not legally permitted to represent inventors
before patent examiners.
- However, if an inventor needs to take advantage of the new expedited
application rules currently being tested in Canada (Patent Prosecution Highway -
PPH), the respected US provisional application system may not actually be the
best choice in this case. (see
- An equivalent route permits a similar result for Canadians who want to
delay filing for up to a year, but retain a patent pending status, namely to
file an "incomplete" (or partial) patent application*. Inventive Solutions can prepare a complete patent specification with
drawings, but will intentionally omit any claims, and then file this package for
the inventor electronically.
- The Canadian Patent Office is mandated to give the inventor at
least a year to file the missing claims, which gives the inventor the same delay
as they would have with a US provisional, but also provides the opportunity to
file for an expedited examination in Canada, and then file the same patent in the
US, which at present is the safer and quicker way
to employ this strategy.
- Likewise, if an invention is only marketable in Canada, Inventive
solutions would only need to prepare an intentionally "incomplete" Canadian
patent application (without claims), so that the inventor has a year to ensure
their market, refine their product, and retain an attorney before completing
their Canadian patent application. For a discussion of first filing issues,
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patent Applications (us)
- A utility patent protects how an article is used and works, while a
design patent protects the way an article looks. Depending on the invention,
there may be patentable aspects from either realm.
- Design patents are much simpler than utility patents because the way an
article looks is readily demonstrated by drawings or photographs. Design patents are much cheaper than utility patents because there is no
need for a detailed examination process. However, one may not use a provisional
application as a foundation for a design patent application. Inventive Solutions can generate the appropriate drawings for a US design
- For detailed information about design patent requirements, review the
- In Canada, the equivalent to a US Design Patent application is the
Industrial Design application.
- Inventive Solutions can document an industrial design and produce the
appropriate drawings, or take the appropriate photographs so that the
designer can make a proper application for an industrial design patent.
- Inventive Solutions can also file the industrial design application
for the inventor electronically.
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Invention reports (IR)
WHAT is an Invention Report?
- Invention reports are written by our patent paralegal, and comprehensively
document a new product or technology. Invention reports also include
drawings, a list of drawing terms, and a prior art background. Invention
reports can be used to produce provisional or utility patent applications.
- Invention reports are currently being used by high-tech companies, inventors, academic
and research institutions as the necessary first step on the path towards
superior patent protection.
- Our experienced patent paralegal collects and distills detailed information about your invention into a
complete report for the patent attorney. The attorney distills from this report the descriptions,
language and appropriate claims required to build a successful patent application. This information
can also be used to document a trade secret, provisional or PCT application.
- Think of the attorney as a hunter, the writer as a porter and the inventor as their guide.
The invention report is equivalent to the supplies the porter must carry so the hunter and guide
can arrive at their destination without undue effort. The smart hunter understands that by hiring
good porters, his client's resources will be conserved to support the critical moments when the
hunter's aim must be both deliberate and true.
- A comprehensive invention report is a cost-effective bridge between the inventor and
their attorney. The likelihood that a patent constructed by this method will
prevent litigation and infringement challenges is dramatically improved.
Invention Reports are similar to:
Provisional Applications (in US) or Incomplete Patent
Applications (in Canada), and
- Less complicated requirements of format & construction unlike full patent application,
may be written in plain English and use photographs or marketing graphics.
- Allow the inventor one year to provide a full patent application (assumes
disclosure). May be converted to a full patent application, or a derivative patent application can use the provisional's earlier filing date.
- Invention reports provide a patent attorney with comprehensive invention documentation
direct from the inventor.
Why use an Invention Report?
- Only one out of every ten inventors who apply are actually issued a patent. The primary reason for this failure is not that their inventive ideas are
unworkable, but that the information in the patent application is too often incomplete, unclear or
inaccurate. Also, over one third of all patents are challenged for validity by third parties.
- Some inventors may be comfortable explaining to others how their invention works, but may not
be so good at putting those words onto paper. By interviewing the inventor
directly, we can assemble
all the details needed for a comprehensive and coherently written invention report.
- This method is less expensive than using an attorney at this stage, and lowers final cost for
a patent application. The resulting report is more accurate and complete because more time is
available to collect & refine information. We charge $60/h to produce invention reports, whereas
patent attorneys can charge over $250/h for comparable work.
- Spend your money where it will do the most good. Prevent costly mistakes and reduce expenses.
Stay focused on what you do best. A patent paralegal really can make a difference. Comprehensive
and accurate results are guaranteed.
- By hiring Inventive Solutions to write your invention report, you will be using the most cost-effective method to protect your invention.
- To preserve valuable time, energy and money, a thorough
search of the prior art is necessary before
developing a product, or applying for a provisional, patent,
- Our comprehensive
search report details all search algorithms
used, lists any relevant prior art discovered, and includes
copies of relevant patent or design documentation.
- Patent search reports also help
the inventor determine the viability, objectives, and terminology of
proposed provisional, patent or design application.
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Trade Secret Documentation
- Protecting information as a trade secret allows you to disclose that
information to third parties with less risk of infringement. The preparation of an invention report is equivalent to documenting an invention as a trade
secret which may also be used as the foundation of any future patent application.
- Although Canadians are protected by limited trade secret legislation, it
becomes much easier to defend intellectual property if an inventor submits some
form of invention declaration to the patent office. (via incomplete or
- Trade secret protection is only as good as the methods its owner uses to
maintain and enforce confidentiality. (Not disclosing, non-disclosure
agreements, policies, security, etc.)
Claims Comparison Grid
- When a Patent Search Report (PSR) reveals that there
are one or several patents directly relevant to a
proposed patent application, the client may request a more
detailed analysis and comparison of the claims of each patent with the
claims of their proposed application.
- By this means, the inventor can make the most informed
assessment of their risk of infringement, freedom to operate
and likelihood of a successful patent application.
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