Startup Intellectual Property

A provisional patent application is a one year place holder for the non-provisional patent application, is not examined, expires within a year, and can not become a patent unless a non-provisional patent application is later filed.  A provisional patent application has few formal requirements beyond a cover sheet.  When considering a provisional patent application, an important aspect is if the inventor plans to eventually file outside the US.  When an inventor wants to eventually file outside the US, I recommend writing the provisional as it was a non-provisional except adding a few very broad claims.  The US is very forgiving to inventors starting off themselves and then hiring a patent practitioner (i.e., patent attorney or agent).  In general, the rest of the world is not as forgiving.      The patent office has 3 tiers of fees: un-discounted, small entity, and micro entity.  All the small companies/independent inventors I’ve worked with are either small entity or micro entity.  Micro entity has a lot of requirements but the main ones are that the inventor has filed less than 4 patents on their own and has a household income of less that 2x medium income.  A provisional patent application is currently $150 for small entity and $75 for micro entity in patent office fees.  A non-provisional patent application is  $910 for small entity and $455 for micro entity for patent office fees.  The non-prov fees cover the init filing and one amendment that is examined.  If allowable, there is an issue fee.  If not-allowable, then can pay more money to have the USPTO continue to examine the application.  Note these are USPTO fees and not professional fees (e.g., attorney/agent/paralegal fees). There are two important aspects if an inventor does do-it-yourself.  First, the legal threshold for a patent application is to teach a person of skill in the art how to make and use the invention without undue experimentation.  Art is an old legal word that basically means technology.  A person is skill in the art is a person with the baseline skill in the industry the invention is in.  For example, person in skill in the art for a web app could be a person with a computer science bachelors degree.  The undue experimentation applies to the unpredictable arts like pharma.   For high tech areas like hardware and software, they are predictable and the undue experimentation generally does not apply.  Second important aspect is to not say anything that will hurt the patent.