Patent Attorney and Founder
Question:
I developed a new technology at the university that I’d like to patent. Since I did not use any external funding, I want to file the patent myself. The details of the technology are not yet fully examined, and I need more time to develop it. Therefore, I decided to follow a provisional patent application.
I have two open questions. First, how detailed should the provisional application be compared to a real patent?
Answer:
Matt: And second, should I hire a patent attorney?
JD: Let’s address the first question. A provisional patent application is different from a full patent. It does not grant any rights but serves as a placeholder, giving you time to further develop your invention. When filing a provisional application, you don’t need to be as detailed as in a non-provisional or formal patent application. However, you should still provide enough information to demonstrate that you have a working invention and that you understand how it works.
JD: Regarding your second question, yes, you should hire a patent attorney. Patenting is a complex process, and having professional help can ensure that you avoid common pitfalls. It’s important to understand that there’s no such thing as a “provisional patent”; it’s a provisional patent application. You don’t gain any rights by simply filing the application.
JD: Additionally, if you’re co-developing this invention with the university, it’s likely that there are other researchers or professors involved who might claim co-inventorship.
Matt: Universities typically invest significant resources in research and development, so they might have an interest in the invention. It’s unusual for an individual to file independently if the work was done within a university setting. I would question why the university is not filing on your behalf and providing legal support.
JD: Filing a provisional application is a good idea, especially if more development is needed. It allows you to do more testing and make adjustments. You can refine and add more detail over time, as long as you are not introducing entirely new subject matter.
JD: An attorney can help review issues of inventorship and ownership, and also assist in preparing for the utility patent application.
JD: Lastly, a provisional patent application lasts for one year. If you file on May 29, 2024, you must file the non-provisional by May 29, 2025. If you do not publish during this period and keep everything confidential, you could file a new provisional application to extend the timeline, assuming no one else has filed a similar patent.