If you are willing to get the provisional patent application, get all your queries answered by reading the blog here.
- What should be the name of the inventor on a provisional application?
The term “inventor” refers to anyone who creates (e.g., completes the mental embodiment) at least one claim. A person who is an inventor does not merely apply an inventive idea (without contributing any conceptual insight). It is not always true that authors of academic papers are inventors.
- Invention ownership: who owns it?
According to U.S. law, patent rights are the property of the inventor, but most inventors must assign their patent rights to their employers due to contractual obligations or institutional intellectual property policies.
A contractor or collaborator may also be required to assign his or her patent rights if he or she is engaged elsewhere.
Two entities may have an undivided ownership interest in a provisional application if their inventors are each obligated to assign their rights to their respective entities.
Patent claims should be included in provisional applications, since they can reveal who invented (and owned) an invention.
The first thing you should do after filing a provisional application is get inventor assignments. In this way, the assignee can file continuing and PCT applications claiming priority over provisional applications, grant licenses, etc.; and it also eliminates potential ownership uncertainty during diligence or litigation.
- In what country was the invention invented?
Before filing a U.S. provisional application, the patent office of another country may require a foreign filing license. In some cases, a nonprovisional U.S. application claiming priority over the foreign application may be filed first in another country.
A patent can also be owned by another entity if it was invented elsewhere (e.g., by a company or institution elsewhere in the U.S. or abroad), for example, if its employees are inventors or if the company provides facilities or services to the inventor(s).).
A license or joint research agreement with another entity may reduce disputes over ownership and control involving inventors from that organization.
- I have a provisional application. When do I have to “convert” it?
It is necessary to file a nonprovisional application and/or foreign patent application within one year of filing a provisional application in order to “convert” it to a nonprovisional application. Nonprovisional applications and/or foreign applications can be filed before one year after the filing date of the provisional application. It will speed up the examination process as well as initiate the term of any patent that might issue based on the nonprovisional or foreign application.
- The same invention can be filed more than once as a provisional application?
The applicant may file a provisional application as many times as he or she desires during the first year of the application’s “life span.”
On-going projects often require multiple provisional applications, with each provisional application representing an incremental advance and/or milestone. By doing so, every advance receives the earliest priority date possible. The concept disclosed in these multiple provisional applications can be used to file patent applications that claim priority to each provisional application prior to the expiration of the first provisional application.
A provisional patent application is always a bad idea for your business