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SMALL BUSINESS | MIND TO MARKET: Developing Ideas Into
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Provisional Patents Buy Inventors a Little Time

July 28, 1999|CYNDIA ZWAHLEN | SPECIAL TO THE TIMES

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.

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