There are circumstances when your startup might have an invention, but you are not ready to take the time, effort, and expense of filing a full patent application with the United States Patent and Trademark Office (USPTO). You may have heard of provisional patents, and you might wonder whether this is adequate to protect your invention before you file for full protection. While many people commonly refer to a “provisional patent,” this is not an actual type of patent that can be granted. Instead, more accurately, you will have a provisional patent application. Having this application on file with the USPTO can provide benefits but not full IP protection similar to a patent with rights to file infringement lawsuits. Patent Pending Status A provisional patent application provides you with “patent…

Since the passage of the America Invents Act, it is a race to the patent office! The first applicant to file wins the race. A Provisional Patent Application allows you to file without all the formalities of a Utility Patent Application (e.g. without any format requirements, formal patent claims, oath or declaration, or any information disclosure (prior art) statement). Importantly, the preparation can be expedited (to win the race) and it provides for the term "Patent Pending" to be applied to the invention. A provisional application has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, we must file a corresponding non-provisional application for patent (also referred to as a Utility Patent Application) during the 12-month pendency period…

For a startup or small technology company, Intellectual Property is likely the company’s most valuable asset. It is imperative that you understand IP, your rights as an IP owner, and, for SBIR projects, the law regarding the government’s use of your IP. The Government has rights in “subject inventions” – inventions that are “conceived or first actually reduced to practice in the performance of work under a funding agreement.” An SBIR award will typically include a patent rights clause which generally permits the SBIR awardee to elect to retain ownership of any subject inventions. In exchange, the SBIR awardee must file a patent application and grant the Government a “nonexclusive, nontransferable, irrevocable, paid-up license to practice, or have practiced on its behalf, the subject invention throughout the world.” An awardee…