The following is background information. The discussion below is very simplified and written to avoid a lot of technicalities and jargon. The below is not legal advice and you should not rely upon it in making decisions. And your reading it does not form an attorney client relationship.
In the past, if two U.S. inventors invented a similar invention and if both applied for a U.S. patent, then the U.S. patent system tried to determine which of the two inventors invented first. Under provisions of the America Invents Action which became effective March 16, 2013, that is no longer true. The advantage is now to the first inventor to file a patent application. Therefore if you have invented something and you want patent protection it is important to file early so you can get an early effective filing date associated with your patent application. An early effective filing date is important.
A person is not entitled to a patent if before their effective filing date the invention has been described in a printed publication, been in public use, on sale, or has been otherwise available to the public. Section 102(a)(1). Thus, publishing something about your invention, offering to sell or selling your invention, using your invention in public, and otherwise making your invention available to the public before you file for a patent application -- and thus secure a filing date -- is risky. The meaning of at least "otherwise available to the public" is unclear. A person who has not filed a patent application should at a minimum get legal advice before engaging in any of the above activities.
It is true that the law does provide a one year grace period (one year before your effective filing date) during which the above activities may be performed by an inventor or by certain other persons without destruction of future patent rights. See: Section 102(b(1). But there are complexities. It is best not to rely on the grace period without first consulting an attorney. Also, for those considering international patent protection, many foreign countries have no such grace period.
In addition, a person is not entitled to a patent if before their effective filing date another person applies for a patent on the same or a similar invention (i.e. obtains an earlier effective filing date) and if that other person's patent application is either eventually published as a patent application publication or issued as a patent. Section 102(a)(2). By "similar invention" it is meant one that renders another invention obvious under Section 103(a).
Broadly speaking, the three primary parts of a non-provisional patent application are a written description, drawings, and claims. The claims are like a legal description of the invention. They are analogous to a legal description of real property in a deed. They stake out what the inventor or inventors want patent protection for. When someone is sued for patent infringement, they are sued for infringing the claims of the patent. The claims are supported by the written description and the drawings. These describe the claimed invention in more detail. Together these largely make up the disclosure of the patent application.
The patent system is based on a trade. An inventor is given a patent for a term consisting of a number of years. During the patent term the inventor has the right to exclude others from practicing the patented invention. In exchange, the inventor must disclose to the public how to make and use the inventor's invention. Because after the patent term has expired, the invention goes into the public domain. And the public is taught by the disclosure of the inventor's patent application how to make and use the invention. Thus, there is a quid pro quo -- the inventor gets patent protection for a limited number of years, but in exchange the inventor must in the patent application describe for the public how to make and use the invention.
Consistent with the above, Section 112(a) of the Patent Act requires a patent application to describe the invention so that one of ordinary skill in the relevant art is enabled to make and use the invention. That is called the Enablement Requirement. The enablement Requirement that a patent disclosure needs to have a detailed production document, such as a blue print. Instead the descriptions are at a conceptual level. The disclosure, which includes a written description and drawings, must enable one of ordinary skill in the art to make and use the invention, as specified in patent claims, with only a reasonable amount of experimentation -- that is, without undue experimentation.
Section 112(a) also has other requirements, including the Written Description requirement which requires the patent application to show that the inventor had possession, at the time the application was filed, of all that the inventor claims is their invention. The Written Description Requirement is sometimes confused with the Enablement Requirement. The purpose of the Written Description Requirement is to assure that someone who claims to have invented something had actually invented it by the filing date. The patent disclosure does this by describing the invention that is claimed in such detail that one who is knowledgeable in the field of the invention can see that the inventor, at the time of filing, actually had possession of the claimed invention.
Section 112(a) also states that the patent disclosure "shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the inventor." Essentially, the Best Mode Requirement says that if an inventor subjectively believes that there is a best way of carrying out the invention, that that best way must be disclosed in the patent application. But under current law, failure to comply with the Best Mode can no longer be used to invalidate a patent claim. The Best Mode Requirement has therefore been somewhat controversial. But, if the best mode of carrying out the invention is not described in the patent disclosure, under the Written Description Requirement, it cannot be specifically claimed.
A non-provisional patent application is what most people think about whey they think about a patent application. It is filed with the U.S. Patent & Trademark Office, it may then be published as a U.S. patent application publication, eventually it is examined for compliance with formalities and for patentability by a U.S. patent examiner, and after examination the examiner may allow it to issue as a U.S. Patent. The above involves significant expense. There is the expense of drafting the non-provisional patent application, such as attorney fees for a patent attorney to draft the application and drafting fees for a patent draftsperson to draw the drawings. There is the cost of USPTO filing fees to file it and there are fees and/or costs associated with prosecuting the patent application in the USPTO after filing.
A provisional patent application is a less formal version of a patent application. Because of the informalities it may be cheaper to prepare. For example, formal drawings are not required and claims are not required. In addition, it is not examined by the USPTO so there is no commitment to the costs associated with examination and prosecution in the Patent Office. It is used to obtain a filing date. By obtaining a filing date, the inventor hopes to prevent the USPTO from citing anything published or issued after the filing date against the patent application. The inventor can then file a follow-up non-provisional application within one year of the filing date. The non-provisional must claim the benefit of the provisional application's filing date. If the inventor fails to file a non-provisional within one year of the filing date of the provisional, then the provisional application goes abandoned and its filing date is lost.
An inventor is not limited to a single provisional application. A first provisional may be filed early in the development process. And later provisional applications may be filed as development proceeds. As long as a non-provisional is filed within one year of the filing date of the first provisional, the provisional applications can all be rolled together into a single application.
Although provisional applications have fewer requirements and formalities than a non-provisional application, they must still satisfy at least the Enablement and Written Description requirements (see above). The provisional application's filing date only protects what is disclosed in the provisional application. If an important feature is left out, then the filing date of the provisional application does not protect that feature. This is a significant risk of provisional applications which sometimes are filed quickly by a lay inventor. Although claims are not required, including claims results in a better quality application. Written correctly, claims guide the drafting of the written description and the drawings -- it might be said that the claims provide goal posts.
One can mark both products and marketing materials with "patent pending" once your patent application is filed, regardless of whether it is a provisional patent application or a non-provisional patent application. Although such marking does not let you sue anyone for infringement until such time as you have an actual patent, marking your product and/or marketing materials with "patent pending" may discourage others from copying your invention because someday you may have a patent. 35 U.S.C. 292 prohibits marking a product and/or marketing materials with "patent pending" unless an application is pending. This means that a provisional patent application only gives you the right to use "patent pending" for the one year that it is in effect. To continue using "patent pending" beyond one year, you must file a non-provisional application on the invention before the provisional application expires. Your right to use "patent pending" also expires if your non-provisional patent application is abandoned.
I think it is most helpful to provide an overview of patent law by going over some of the subjects that I ask about during an inventor interview and why I ask them. These are not all of the subjects I would cover. Also, the information below is not legal advice to anyone, but is intended just as general information about patent law and about the way I conduct an inventor interview. I assume no responsibility for any action you or others may take or fail to take based on the information below. No attorney-client relationship is formed by your reading or distributing of the information below.
1. Screen for Conflicts of Interest: The very first thing I do when you, as a potential client contact me, is to ask questions to determine if representing you would cause a conflict if interest. For example, I may already represent someone who has an invention that is too similar to yours. If so, I could not represent you. In fact, we do not have any attorney-client relationship until I have find out if I can represent you. Therefore, you should not volunteer any confidential information about your invention, until I can determine if there is a potential conflict of interest. I will start out by asking you very general questions about the invention, such as what area of technology it is in and then ask progressively more detailed questions to rule out a conflict of interest.
As an other example of a conflict of interest, you may have conceived of your invention while working for an employer and I may currently represent that employer. If there is an issue about whether you are required to assign your invention to your employer, then I could not represent you. Therefore, before we can establish an attorney-client relationship, I need to ask you some questions about who you are and about anyone else who might have an interest in your invention. I have to make sure that I do not already represent such a person.
Once we have determined that I do not have a conflict of interest then I we can get down to business.