1. Overall Strategy:

Goal: Get business done while protecting our IP correctly and efficiently.

File a provisional when we have an invention that:
- we believe is likely to be commercializable, and/or
- we have made an initial market assessment, and/or
- we intend to disclose to potential customers or collaborators, and
- a 20-minute prior art search on the USPTO website yields no patent that is identical to our idea
- don't worry about "trivial" or "obvious" for a provisional (the lawyers can argue that later if necessary)

File for a patent on a prior provisional (within 12 months) when:
- we still believe it is commercializable, and
- we can back up the "claims" in our provisional with substance

Remember the reasons for filing provisionals and patents:
- protect our IP from competitors
- attract investors, customers, collaborators
- discourage and counter infringement suits from competitors

IP protection starts with common sense:
- Always have an NDA signed before disclosing sensitive information outside the company, even if provisionals/patents have been filed. Make sure everyone listening is covered by an NDA, remind them of this before you start, and make sure the NDA has not expired.
- You might discuss something outside the scope of the patent (intentionally or not).
- Applying for, securing, and defending a patent are not the same -- NDA is further protection.
- It shows your customer/collaborator that you take IP seriously.
- How do I know if a piece of information is sensitive? Ask your CEO or CTO. (If you have to ask, it probably is! Err on the side of caution.)
- Use astandard NDA form. An NDA from an outside organization may only be signed by an employee who is formally authorized to do so, and only after consulting our CEO or CTO. Obviously, we would prefer that outsiders sign our NDA, instead of (or in addition to) their own. Consult our IP attorney with questions regarding the content of any NDA.
- Keep good notes (with dates!), using approved company notebooks and lab books. Document new technical ideas and techniques in detail, and have someone else in the company sign the "read and understood by" portion. This is valuable for demonstrating precedent later on! Catalog old notebooks (don't ever throw them away!).
- Provisionals, patents, and NDAs only offer so much protection to a small company with limited $ to defend them, so the golden rule of IP is: distribute sensitive information outside the company on a need-to-know basis only. There is a balance here between getting business done and protecting our IP.

2. About Writing Provisionals:

Goal: Make the provisional language specific enough to be meaningful and defensible, yet general enough to be widely-applicable.

Writing guidelines:
- not longer than 4 pages (incl. diagrams) if possible
- think of at least 3 claims you want to specify later in the patent, and include them in narrative form in the provisional
- always include a "preferred embodiment" or "best mode" of the invention (at least one diagram)
- keep it general and inclusive, but be sure there's enough substance to draw on later for the patent
- include the results of your 20-minute prior art search (print key patents that the attorneys should read)
- include every inventor (this is anyone who contributed in any way to the invention)
- if you're going to claim "by any manufacturing process common to the art of semiconductor/MEMS processing", as we often do, consider including some references (e.g. a survey paper or text book)
- decide if you want to patent in the USA only, or other countries as well, and inform the attorney

Important things to keep in mind:
- everything you claim in the patent must "be supported" in the provisional in order to claim the early filing date associated with the provisional (hence, some mention of a preferred embodiment and best mode are essential!)
- any claim not supported in the provisional will be assigned to the grant date of the patent, not the provisional
- it is possible to have in the same patent some claims that have the provisional filing date (i.e. supported in the provisional) and others that have the patent filing date (i.e. not supported in the provisional)
- avoid limiting statements in the provisional (e.g. "the invention must be ...")
- how would a competitor design around your provisional? include language to prevent it!
- provisional aps are not public, they are confidential
- once any patent is published on a provisional, the whole provisional becomes public (think about this when deciding whether to combine different concepts into one provisional!)
- anything in the provisional that is not claimed in a later patent may be considered "donated" to the public (prior art) (think about this when combining different concepts into one provisional and when writing patent(s) on that provisional!)
- do not use the term "patent pending" until the provisional is submitted to USPTO (otherwise you may forfeit your right to ever file the patent)
- the provisional must be filed within one year following the date of first sale, offer for sale, public use, or publication of the invention (note: these pre-filing disclosures, although protected in the USA, may preclude patenting in foreign countries!)
- provisional aps are loosely examined for compliance to rules and procedures, but are not judged on their merits (warning: can lead to a false sense of security!)
- a patent ap must be filed within one year of filing the provisional in order to claim the early filing date; failure to do so may prevent you from ever filing a patent if the invention is for sale or in use during the provisional period!
- the non-provisional must have at least one inventor in common with the provisional ap in order to claim the benefit of the provisional filing date
- amendments are not permitted to a provisional after it is filed (except for compliance with regulations)
- if you mail the provisional in yourself (instead of through a lawyer) use registered mail at the U.S. Post Office (so the provisional filing date will be the post-marked date) instead of FedEx or UPS (the filing date will be the date received at USPTO).

3. Procedure for Filing a Provisional

Goal: Create a standardized procedure for filing provisionals that is efficient and legally sound.

1. Write a draft of the provisional. (Word it like a provisional, not like a technical white paper.)
2. Send the draft around for peer review. (Peers -- respond quickly, it's only a few pages long!)
3. Complete the "Inventor Interview" questionnaire.
4. Complete relevant parts of "Application for United States Provisional Patent" (shared drive).
For a provisional, the relevant items are 0002 - 0011, and optional items are 0012 - 0021.
5. Send these docs and the draft to the attorney, follow up with a conversation about the invention.
6. Make edits recommended by attorney, create final draft, return to attorney.
7. All inventors must sign the "Assignment of Invention" (shared drive), must be notarized. Submit
original to the attorney and a copy to the company's office administrator.
8. Log reminders in Gold Mine for 6 months, 9 months, and 11 months from the provisional filing date (so we track the bar date for filing the non-provisional patent ap). This system is redundant to the attorney's tracking system.
9. Inform the appropriate manager so he can update his Project Matrix spreadsheet (shared drive) with the new IP status.

4. Cost Considerations

Goal: Pay the lawyers for their intellectual input, do the grunt work ourselves to keep the cost down.

- Use the attorney for content review, legal wordsmithing, and consultation on legal questions.
- The closer our draft is to "patent office worthy", the less work the attorney does, and the less it costs us!
- By completing the routine paperwork (see above) ourselves, we eliminate much of the attorney cost.
- If we do our homework right, the cost of filing a provisional should be $500 - 1,000.
- And the cost of a non-provisional patent should be $8,000 - 12,000, depending on complexity.
- The attorney must clearly understand that we expect to monitor and control the cost of provisionals -- i.e. no surprises in the bill! (Good communication is particularly important when the attorney must spend unanticipated time battling with the USPTO, etc.)