This post is part of Priori’s blog series “From Our Network,” where we feature lawyers in our network discussing important issues small businesses face. After every post, we give our readers a chance to ask the lawyer questions, and the lawyer picks several to answer. In today’s post, intellectual property lawyer Mark Koffsky answers reader questions about how small businesses can and should use provisional patents to protect themselves.
If there is a mistake in my provisional filing, what do I do? In other words, should I file a second one or if I revise it, does the first date still count?
If you make a mistake in a provisional filing, there is no way to correct it. The best practice is to file the second, corrected provisional as soon as possible. To the extent that there is any material in the first provisional that remains useful, you can still rely on the first provisional’s earlier filing date. And make sure that the final patent application is filed within a year of the first provisional so you can get the benefit of the filing dates of both the first and second provisional applications.
Are there any harms to drafting something [a provisional patent] myself and submitting it without a lawyer reviewing it?
I admit to some bias here, but consulting with a lawyer earlier rather than later in any legal process will usually result in less total overall legal spend and less heartache overall. Patent applications are no different—a review by a lawyer at the provisional stage may prevent mistakes that will be expensive or impossible to fix later in the process One way to reduce cost is to have the client do the bulk of the drafting at the provisional stage. At that point, the lawyer may be engaged only to review the application, offer any suggestions and put it a format suitable for filing as a provisional. Later, if the final application is desired, the lawyer will need to be more involved in drafting since the requirements for a final application are far more complex than a provisional application.
I've heard a lot about patent trolls, and I'm a little confused. What are they, and as a small tech company, should I even care?
A recent Obama administration report defined patent trolls as firms that “use patents primarily to obtain license fees rather than to support the development or transfer of technology.” As you might imagine, there are many views as to whether this definition is correct and whether patent trolls are beneficial to innovation or the patent system.
The one thing to keep in mind is that my article about provisional applications relates to an offensive patent issue: filing provisional patent applications to potentially prevent others from copying your patentable ideas. The other side of the coin is the defensive patent issue: managing risk related to others preventing you from copying their patented ideas. Depending on the industry and nature of your company, dealing with patent trolls may be a large or small part of managing that defensive patent risk.
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