The clock is ticking for inventor Rich Michaelsen, who is relying on a little-known patent application process to protect his time-sensitive novelty product, Glitch--the Millennium Bug Countdown Clock--from competitors.
Michaelsen is trying to raise the money he needs to get his millennium countdown gadget on the market before the clock tolls midnight on New Year's Eve and his plastic timepiece turns into the proverbial pumpkin.
He decided to take advantage of the relatively new provisional patent application process, which for him proved a quick and cheap way to file an application with the U.S. Patent and Trademark Office. The increasing popularity of that process concerns some patent attorneys, who worry inventors may not fully understand it--potentially jeopardizing their patent rights in the future.
The Santa Monica inventor filed the application so he could mark his invention "Patent pending." Michaelsen, who has spent almost $15,000 to get the bendable figurine to the prototype stage, hopes that designation will discourage knockoffs during the potentially short life span of his millennium bug. He's not worried about the countdown clocks already on the market. It's his unique combination of the millennium bug action figure with a countdown clock that he's trying to protect. He may never apply for an actual patent, he said.
That's not exactly what the patent office had in mind when it instituted the provisional application four years ago. The provisional application, which has to be followed up with a regular application if an inventor wants to obtain a patent, was meant to give U.S. patent holders the same period of patent protection in the U.S. as their foreign counterparts.
Inventors such as Michaelsen are finding it can have additional benefits. Their interest has pushed the number of provisional applications filed to almost 52,000 so far this year. Patent attorneys, on the other hand, are worrying about the potential drawbacks of the new process.
"I'm not an advocate of them," said David Randall, an intellectual property attorney with Lyon & Lyon in Los Angeles. "I think they give too many people a false sense of security."
His concerns are based on the differences between a provisional application and a regular application for a patent. These differences can work for or against an inventor.
On the plus side, it's cheaper to file a provisional application with the patent office. It costs $75 for an individual inventor or a small company, $150 for a large company. By comparison, a regular application costs $380 and $760, respectively. A provisional application also can take less time to prepare.
That's because it does not include the key part of the regular application--the claims section. It's in the claims section that an invention stakes out its unique territory. Usually the broader the claims, the better.
Some patent attorneys estimate a savings of 15% or more on their preparation fees for provisional applications, because they are shorter.
Why is the inventor able to skip this vital section? Because the patent office never looks at a provisional application. It just registers it, which gives the inventor that all-important official filing date.
Then an inventor has one year to decide if the invention is worth a regular patent application. In that year, the inventor may decide to show off the invention at trade shows, work on improvements, curry interest with investors or perhaps conduct formal market research.
That's the route taken by inventor Adan Reinosa, who filed three provisional applications on his CardioLube engine pre-lubrication system, which he said is one-eighth the size of traditional models and much faster.
"All of a sudden you have something that is protected, and you can talk about it. [A provisional application] is a beautiful instrument," said Reinosa, president of Pareto Point Industries, a start-up company in East Los Angeles. Reinosa received two patents last year on his invention.
Paranoia, a seeming byproduct of the invention process, was the motivation behind inventor John Woods' decision to file a provisional patent application after he had filed a regular application for a patent on his pet product.
"The year or two I was waiting, my paranoia exponentially increased. I could think of at least a couple ways to get around my claims," said Woods, a Hollywood jazz club bartender who has spent almost five years and $20,000 on his invention.
He thought he would get an investor interested enough in the contents of the provisional applications to foot the bill for a new round of regular patent applications. Instead, he got involved in a dispute with an investor over an alleged breach of confidentiality. Eventually he received a patent based on his regular application and let the provisional application expire.
All three inventors had good reasons for filing provisional applications, patent attorneys said. The attorneys, though, worry that some provisional applications may not hold up under the intense scrutiny to which patent applications can be subject.
Too many inventors mistakenly look upon a provisional application as a do-it-yourself project, they said.
Typically a regular patent application is based on the preceding provisional application, which is why attorneys worry about a sloppy provisional.
"If you intend to convince somebody that what is in the patent application is valuable and they should pay you money for it, then somebody is going to spend a lot of time scrutinizing that patent application and the resulting patent," said David J. Arthur, a patent attorney in Irvine. "Most of the ones I have seen prepared by inventors themselves tend to be lacking."
Patent attorney Finn T. Simmensen of Kleinberg & Lerner in Los Angeles shared that concern.
"If what's filed as a provisional is slapdash, it might prove too weak to [result] in any kind of patent at all or weak enough that the only patent you can get is narrower than you want or potentially too weak to hold up in court," Simmensen said.
In fact, the idea that a provisional application can be tossed together without much thought is the first of three common misconceptions about this type of an application, they said.
Any of the following misconceptions could trip up an inventor:
* Misconception No. 1: A provisional patent application doesn't have to be taken seriously.
This is almost always wrong. If your plan is to get a patent on your invention, your provisional patent application should meet the same legal standards as a regular patent application.
"You just can't throw any old thing into the patent office and expect it to pass muster," said Stephen Kunin, deputy assistant commissioner for patent policy at the U.S. Patent and Trademark Office in Crystal City, Va.
While it's true that the patent office doesn't look at your provisional patent application when you send it in, an inadequate application could backfire if you try to use the filing date of your provisional application to prove your patent rights in the future.
* Misconception No. 2: You can get a provisional patent.
Wrong. A provisional patent application does not result in a provisional patent. There is no such thing.
* Misconception No. 3: A provisional patent application will result in a regular patent.
Wrong. A provisional patent application does not result in a patent. Only a regular patent application opens the door to a patent. A provisional patent application can give you an extra year before you have to file a regular patent application, which can be useful to some inventors.
If you don't file a regular application within that year, your provisional application will expire and you'll lose your early filing date.
Inventors aren't the only ones who are confused.
"Being a relatively new [process], we are all still trying to figure out exactly how this is falling out," attorney Arthur said.
Cyndia Zwahlen can be reached by e-mail at firstname.lastname@example.org.