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Provisional Patent Applications, The Good, The Bad, and the Ugly
The document provides an overview of provisional patent applications, highlighting their advantages, disadvantages, and drafting considerations. It emphasizes the importance of working with a patent attorney and the potential pitfalls of poorly written applications. It also outlines helpful strategies for creating a draft, including cost-saving measures and the necessary elements for a successful application.
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Provisional Patent Applications, The Good, The Bad, and the Ugly
- 1. Provisional Patent Applications, The Good, TheBad, and the Ugly. Copyright FLYNN IP LAW 2017 1
- 2. Provisional Patent Applications, TheGood, The Bad, and the Ugly Copyright FLYNN IP LAW 2017 2 SBTDC Webinar April 26, 2017 By Kevin E Flynn
- 3. Provisional Patent Applications, The Good, TheBad, and the Ugly. Copyright FLYNN IP LAW 2017 3
- 4. Disclaimer • To havethe best chance of good results, it is ideal that you work from the start with a patent attorney. • However, some people are not ready or able to do that. • So I am giving you pointers on how to do a better job of creating a draft provisional application for review by a patent attorney. Copyright FLYNN IP LAW 2017 4
- 5. Disclaimer • Each inventionbenefits from a slightly different approach in drafting the patent application. • Generic guidelines here are not tailored to specific inventions. • Filing a provisional patent application without getting a review and guidance by a patent attorney is a REALLY BAD IDEA. Copyright FLYNN IP LAW 2017 5
- 6. Patent Attorney asEditor Some of my clients that have budget constraints so that they cannot afford to have me write their provisional application – write a draft and then…. • Pay for my time to review and provide a heavily annotated draft with suggestions for changes or expansions. • This can be a cost effective way to infuse quality at a reduced cost. Copyright FLYNN IP LAW 2017 6
- 7. Provisional Patent Applications The Good CopyrightFLYNN IP LAW 2017 7
- 8. Why consider a ProvisionalPatent Application? • A provisional patent application is an alternative to a regular utility application (sometimes called a non-provisional application). • A provisional application can be less expensive to draft than a regular (non- provisional) application. Copyright FLYNN IP LAW 2017 8
- 9. Why consider aProvisional? • You can claim the benefit of the provisional application if you file a non-provisional application within a year. • The provisional patent application expires after a year. Copyright FLYNN IP LAW 2017 9
- 10. Secret • A provisionalapplication is never published. • A provisional application becomes available to the public ONLY after a non-provisional application that claims the provisional application becomes available to the public (as a published application or an issued patent) Copyright FLYNN IP LAW 2017 10
- 11. Provisional Helps With Chicken& Egg Problem • Want to raise money, discuss with potential clients, compete for grants, do extensive testing in public… • But need a patent application on file…. • But before you file a patent application you want to raise money, discuss with potential clients, compete for grants, do extensive testing in public… Copyright FLYNN IP LAW 2017 11
- 12. Opportunities for CostSavings Copyright FLYNN IP LAW 2017 12
- 13. Drawings • Formal drawingstake time to create and to label with all the element numbers. • Then more time is used getting those element numbers into the specification each time each noun is used. Copyright FLYNN IP LAW 2017 13
- 14. Provisional Application Drawings ANYTHINGGOES • Can be hand drawn. • Can be a photograph. • Can be in color. • Can skip (for now) the element numbers. • Can embed in the specification (like a magazine article). Copyright FLYNN IP LAW 2017 14
- 15. Photos are yourFriends • Take lots of photos. • Take photos from different viewpoints. • Zoom in, zoom out. • Take photos of each component. • Take photos after each step of assembly. • Small downside is that lots of photos may mean you have to divide the file up when you upload. Copyright FLYNN IP LAW 2017 15
- 16. More Cost Savings •Canskip redundant parts required in a non- provisional application. Copyright FLYNN IP LAW 2017 16
- 17. Skip (for now) •SUMMARY OF THE DISCLOSURE (SOMETIMES CALLED SUMMARY OF THE INVENTION) • One way to summarize some of the many teachings of the present disclosure is a method for production of sterile surgical slush outside of a sterile field and subsequent delivery of sterile surgical slush to the sterile field. The method may be described as: • placing a quantity of sterile saline into a non-sterile slush making device located outside of the sterile field, the sterile saline contained in a slush container, a set of interior and exterior surfaces of the slush container starting as sterile; • the slush container enveloped by a sleeve assembly comprising a container sleeve that covers at least a portion of the slush container and a sleeve cap engaged with the container sleeve, the sleeve assembly is initially sterile but an exterior of the sleeve assembly is deemed not sterile not later than once the sleeve assembly with slush container is placed into the slush making device; • removing the slush container enveloped by the sleeve assembly from the slush making device after conversion of the sterile saline to sterile surgical slush; • separating the sleeve cap from the container sleeve to expose a portion of the slush container; and Copyright FLYNN IP LAW 2017 17
- 18. Skip (for now) •Brief Description of the Figures. • Sort of a bill of materials/table of contents that explains what each figure shows. Copyright FLYNN IP LAW 2017 18
- 19. Example • FIG. 1shows a slush container 100 with a slush bottle 110 and a lid 104. • FIG. 2 shows a front plan view of a slush making machine 130. Copyright FLYNN IP LAW 2017 19
- 20. Can skip theAbstract • Don’t worry about the abstract unless you want to share with your VC folks an abstract of what was in the provisional application you filed. Copyright FLYNN IP LAW 2017 20
- 21. Example • ABSTRACT OFTHE DISCLOSURE • • Production of sterile therapeutic medium such as sterile surgical slush for use in surgery. A sterile slush container with a sterile sleeve assembly so that the outside of the sterile slush container remains sterile after placement in a non-sterile slush making machine so that the sterile slush container may be returned to the sterile field after removal of the sterile slush container from the sleeve assembly. Copyright FLYNN IP LAW 2017 21
- 22. Claims can beomitted • A patent claim is a legal right to prohibit others from making a product or providing a service covered by the claim. • This is why you work so hard to get a patent. Copyright FLYNN IP LAW 2017 22
- 23. Claim Drafting isExpensive • A patent claim is a cross between a technical disclosure and a poem. • The claim must describe how your invention is new and different but ideally uses abstractions where possible to provide broad coverage. • A great deal of time goes into picking the right words. • Claim set includes claims of different scope. Copyright FLYNN IP LAW 2017 23
- 24. NOTE •While the finetuning of language for the claims can be put off until you draft the non-provisional application— Copyright FLYNN IP LAW 2017 24
- 25. NOTE – part2 It is really smart to at least make a wish list of what you hope to get out of the claims so that you can focus the provisional application to support that wish list. Copyright FLYNN IP LAW 2017 25
- 26. Background • The backgroundinformation is technically not required as it does not describe your invention. • It is frequently useful, even in a provisional application to introduce the environment where your invention is used and to introduce relevant concepts so you don’t have to do this in the detailed description section of the patent application Copyright FLYNN IP LAW 2017 26
- 27. Discussion of PriorArt • This can feel productive to write lots of text discussing prior art patents or devices. • But there are many ways that this material can come back and cause problems. Many patent attorneys have a default rule of no discussion of the prior art within the patent application. Copyright FLYNN IP LAW 2017 27
- 28. Discussion of PriorArt • You may want to prepare a summary of how your invention differs from the prior art as a separate document to be shared with the patent attorney. Copyright FLYNN IP LAW 2017 28
- 29. More Good • Theend date for an issued patent is 20 years from the filing date of the first non-provisional application in the family. • So filing a provisional application and then waiting a year to file the non- provisional application slides your patent term out so your patent expires later. Copyright FLYNN IP LAW 2017 29
- 30. Sliding Out theTerm • Sliding out a year is usually not on the minds of entrepreneurs, but it can be important if the bulk of the value from the patent comes from the later years. ( ). Copyright FLYNN IP LAW 2017 30
- 31. Another GOOD reasonto consider a provisional application. When you have a need for Speed. Copyright FLYNN IP LAW 2017 31
- 32. Provisional Applications Can recycletext that you have from: • A technical article about to publish, • A grant application you are about to file • A PowerPoint slide set that you are going to give next week. Copyright FLYNN IP LAW 2017 32
- 33. This is SUB-OPTIMAL •Using text from documents intended for other purposes is NOT the best way of drafting any sort of patent application. • But if it is a question of recycling or letting rights lapse – you do the best you can. Copyright FLYNN IP LAW 2017 33
- 34. Provisional Patent Applications The Bad CopyrightFLYNN IP LAW 2017 34
- 35. That bit aboutcost savings… • The only savings come when the idea is a dud and you do not file a non- provisional application. • If the idea is good and you file a non- provisional application, then the total cost is more. Copyright FLYNN IP LAW 2017 35
- 36. More More More •More filing receipts. • More assignments. • More reminders. • Costs to write the non-provisional may still be substantive. Everything you skipped in the provisional must eventually be done. Copyright FLYNN IP LAW 2017 36
- 37. Cost Savings • Tothe extent that you have the time and budget to write a provisional application that is essentially an initial draft of a non- provisional application, then there is less waste. • If your provisional application is nothing like a non-provisional application, then the patent attorney will essentially start over. Copyright FLYNN IP LAW 2017 37
- 38. Provisional Patent Applications The UGLY CopyrightFLYNN IP LAW 2017 38
- 39. Copyright FLYNN IPLAW 2017 39
- 40. YOU MAY LOSEIT ALL • A poorly written provisional application coupled with a lack of understanding of the process can lead to a situation that CANNOT be fixed when you finally call in a patent attorney to write the non-provisional application. Copyright FLYNN IP LAW 2017 40
- 41. THERE IS NO“Placeholder” Copyright FLYNN IP LAW 2017 41
- 42. Provisional Application File aSubstantive Provisional Application Or DO NOT File a Substantive Provisional Application There is no provisional application. Copyright FLYNN IP LAW 2017 42
- 43. To Understand I needto explain what MUST be present in a non-provisional application beyond. the required sections (title, brief description of the figures, specification, claims, abstract, drawings where needed….) Copyright FLYNN IP LAW 2017 43
- 44. • Enough detailto explain to a person of ordinary skill in the relevant field – • HOW TO MAKE and USE the invention. • This includes what you think is the best way of doing it, if there are several ways. Copyright FLYNN IP LAW 2017 44
- 45. You cannot seeka patent by giving an inferior way to do your invention while withholding the best way to do your invention. Copyright FLYNN IP LAW 2017 45
- 46. • You needto show that you are in possession of the invention. • A patent application is not a lottery ticket where you try to guess what people may someday invent. Copyright FLYNN IP LAW 2017 46
- 47. You need supportfor your claims • If your patent application does NOT meet the various tests for supporting the language of the claims – then the claim will not be allowed or if allowed, may be invalidated when you try to assert the claim against a competitor. Copyright FLYNN IP LAW 2017 47
- 48. But what aboutfor a Provisional Application? • How are the rules more relaxed for a provisional application versus those strict requirements for substance for a non-provisional application? Copyright FLYNN IP LAW 2017 48
- 49. But what aboutfor a Provisional Application? • How are the rules more relaxed for a provisional application versus those strict requirements for substance for a non-provisional application? NOT RELAXED AT ALL Copyright FLYNN IP LAW 2017 49
- 50. LACK OF SUBSTANCE EQUALSFAILURE By the Time you Realize that you have a lack of substance… it is often TOO LATE TO FIX. Copyright FLYNN IP LAW 2017 50
- 51. How does thisHappen? • Folks assume that if a provisional patent application can be less formal then it must be OK to be less substantive. WRONG. Copyright FLYNN IP LAW 2017 51
- 52. If a non-provisionalapplication is a campground fully set up… Copyright FLYNN IP LAW 2017 52
- 53. Then a provisionalapplication is the SUV loaded for the camping trip. Copyright FLYNN IP LAW 2017 53 The SUV can have the camp stove broken down for transport with the fuel canisters in another part of the SUV At the camp site, the stove is assembled and connected to the fuel. The fishing poles do not have the hooks and bobbers connected. The artificial bait is packed in the tackle box. The fishing pole is prepped for use just before fishing. The tent is folded and stored with the stakes, the hammer for the tent stakes and the ground tarp are in the SUV but not near The tent is fully assembled.
- 54. You can rearrangeand add focus • So one can make substantial changes from the provisional application to the non-provisional application. • BUT – the essential elements (stove and fuel), (poles and hooks), tent, stakes, ground tarp, and hammer must all be present. • If some important elements do not get into the SUV, you don’t have them at the campsite and this may have serious consequences. Copyright FLYNN IP LAW 2017 54
- 55. Provisional Applications thatlack essential elements … • If a provisional application does not have all the required material for a non-provisional patent application including support for all the desired claims then there may be a fatal problem. • The material may be added in the non- provisional application but then the claims are judged against the date that the non- provisional application is filed. THIS MAY BE TOO LATE. Copyright FLYNN IP LAW 2017 55
- 56. Why TOO LATE? •You need to have the substance in a patent application that is on file before certain milestones. • Folks with a non-substantive provisional application do not know what they do not know. Copyright FLYNN IP LAW 2017 56
- 57. Milestones • BEFORE APUBLIC USE INCLUDING A USE AT A TRADE SHOW OR A BUSINESS PLAN COMPETITION. • USE UNDER AN NDA WOULD BE OK – so you can demonstrate to a potential customer who has signed an NDA. Copyright FLYNN IP LAW 2017 57
- 58. Milestones • BEFORE APUBLIC SALE. • SALE UNDER AN NDA WOULD BE OK (we think) Copyright FLYNN IP LAW 2017 58
- 59. We think anon-public sale is OK • Here is a portion of 35 USC 102 • Novelty; Prior Art.—A person shall be entitled to a patent unless— • (1) • the claimed invention was patented, described in a printed publication, or in public use, • on sale, or otherwise available to the public before the effective filing date of the claimed invention • Most people, including the United States Patent and Trademark Office read “On Sale” as On public Sale. So a sale under a non-disclosure agreement would not count. This will not be 100% known until it is ruled upon by the Federal Circuit or the US Supreme court but for now, most people feel safe making sales under an NDA. Copyright FLYNN IP LAW 2017 59
- 60. Public Disclosure • USRules allow you to file a patent application within a year of your own public disclosure. • BUT Many Other Countries want ABSOLUTE NOVELTY so a public disclosure terminates your options for those countries • (And makes things more complicated in the US) Copyright FLYNN IP LAW 2017 60
- 61. Guide to Producing Aless bad, DIY draft provisional patent application. Copyright FLYNN IP LAW 2017 61
- 62. Step 1 Do somepatent searching to find relevant patents to use as examples. Copyright FLYNN IP LAW 2017 62
- 63. Patent Searching Tips •See slide set on patent searching found at • http://www.slideshare.net/search/slideshow? searchfrom=header&q=%22Kevin+E+Flynn%2 2&ud=any&ft=all&lang=en&sort= Copyright FLYNN IP LAW 2017 63
- 64. Why Search? • Searchingprovides you with examples of the level of detail that is useful. • You may find prior art that is close to some aspects of your invention. It may be time to put focus on the parts of your invention that are not found in prior art patents. Copyright FLYNN IP LAW 2017 64
- 65. Step 2. • Createa Wish List of what you hope that the patent will prohibit your competitors from doing. • Be reasonable do not try to claim something that was not commonly done in your field. If it has been done at all, then it would be difficult to patent. Copyright FLYNN IP LAW 2017 65
- 66. Use the WishList as your Compass • The Wish List does not have to be in the patent application. (May be best if it is not there). • But USE the Wish List to guide what gets emphasized in the patent application. • Use the Wish List as a check list at the end to ensure that you have adequately supported what is on the Wish List. Copyright FLYNN IP LAW 2017 66
- 67. Step 3 • Geta proposed sequence of images first, then work on the text. • A patent application should be driven by the images. • You can do your first draft in PowerPoint using the speaker notes function. • Feel free to add images if needed to make a transitional point. Copyright FLYNN IP LAW 2017 67
- 68. Do not WorryAbout FIG Numbers • You will add and delete Figures during the process. • So Start with FIG. A, then FIG B, but feel free to add FIG. A1 between them. • And then feel free to Add FIG. C and drop FIG. B so that there is a gap in the sequence. Copyright FLYNN IP LAW 2017 68
- 69. Step 4 Describe theimages. • Start with big picture concepts where relevant. • Wa l l o w in the details. (Boring or slow moving is not a sin in this domain). Copyright FLYNN IP LAW 2017 69
- 70. Step 5 Maintain alist of nouns. • As you add a noun, add it to the list. – List can be a spreadsheet or Word Table so you can sort. Copyright FLYNN IP LAW 2017 70 Noun Name Element Number (if used) Figure where Best seen Slush container 100 A1 Slush bottle 110 A1 Lid 104 A1
- 71. Step 5 Copyright FLYNNIP LAW 2017 71 Noun Name Element Number (if used) Figure where Best seen Slush container 100 A1 Slush bottle 110 A1 Lid 104 A1
- 72. Step 5 -ALT Instead of a list, you can annotate the drawings with your names Copyright FLYNN IP LAW 2017 72
- 73. This is tedious •But using nouns consistently is part of writing a patent application and removes ambiguity. • A variation of a part used in a new embodiment can get an alternative name and should get a new number if you are using numbers. Copyright FLYNN IP LAW 2017 73
- 74. Use Longer Names •Some systems have lots of components. • So do not shy away from –Master Arbiter West Port. –Can assign a shorted abbreviation. EX. FIG. A6 contains Master Arbiter West Port (“MAWP”). The MAWP receives incoming Hello messages… Copyright FLYNN IP LAW 2017 74
- 75. Step 6 • Focuson a first embodiment then handle variations and alternative embodiments. • This is a rule of thumb and can be violated when appropriate. • Goal is to be clear on a first embodiment without confusing reader by discussing alternatives before the first embodiment is clear. Copyright FLYNN IP LAW 2017 75
- 76. Step 7 • Adda section where you go through the sequence to make/assemble/configure/customize the item or process. • Add a section where you go through a sequence where an end user uses the device or service. Copyright FLYNN IP LAW 2017 76
- 77. More than oneUse Case For a device or service that may have more than one use case, feel free to have an additional use sequence for each major use case. • Ratchet Wrench use case to drive hex bolt head. • Ratchet Wrench use case with adapter to drive Phillips head screw. Copyright FLYNN IP LAW 2017 77
- 78. The Sequences In thenon-provisional patent application, these sequences may be dressed up as flow charts but that is not required now as long as you put the details into words. Copyright FLYNN IP LAW 2017 78
- 79. The Sequences The sequenceexercise seems juvenile, redundant, and not helpful. TRUST ME. This extra step usually captures at least one noun or process step that was not in the draft before these sequences. Copyright FLYNN IP LAW 2017 79
- 80. Step 7 Describe aSecond Embodiment • Normally this can be done after a complete discussion of the first embodiment, including the sequences. • Usually the Second Embodiment has some overlapping nouns or process steps so you can focus just on what is new. Copyright FLYNN IP LAW 2017 80
- 81. Repeat with MoreEmbodiments • Each successive embodiment is apt to take less work as there will be more and more in common with at least portions of earlier embodiments. Copyright FLYNN IP LAW 2017 81
- 82. Favorite Embodiment • Yourfavorite embodiment does NOT have to be the first embodiment. • I sometimes describe the most simple embodiment first and then describe the favorite but more complicated embodiment later. • You do not have to officially declare which embodiment is your favorite. Copyright FLYNN IP LAW 2017 82
- 83. Variations • Sometimes youhave alternatives that do not need a detailed description. The disclosure shows a power supply connected to an AC power source. Those of skill in the art will appreciate that a DC battery may be used as well as AC power operated at something other than 60 Hz. Copyright FLYNN IP LAW 2017 83
- 84. Goal of Alternativesand Variations. Copyright FLYNN IP LAW 2017 84 Showing the favorite embodiment is not enough. Think of the favorite embodiment as the bull’s eye of the target. It would not be a total success if you allowed a competitor to make a product in the inner red ring.
- 85. Goal of Alternativesand Variations. Copyright FLYNN IP LAW 2017 85 Goal of describing alternatives and variations is to try to take off the table the next several rings of alternative solutions that are still viable. Want any design around solutions to be as far from the optimal as possible.
- 86. Step 8 Bill ofMaterial or Vendor List • This is not required but can fill in gaps. • Akin to … a picture speaks a thousand words. Copyright FLYNN IP LAW 2017 86
- 87. Example • A suitablecontroller for use as described in this document is the Productivity3000 (Modular Programmable Controller) as described at http://www.aboutplcs.com/p3000/ Copyright FLYNN IP LAW 2017 87
- 88. Example • The sleeve200 may be made of a polyethylene such as Linear Low Density Polyethylene (LLDPE). The sleeve 200 may be relatively thin such as between 0.010 inches thick to 0.025 inches thick. Sleeves may be made from other materials such as polypropylene, polyolefin, or analogous materials. Copyright FLYNN IP LAW 2017 88
- 89. Step 9 • Reviewyour Wish List. • Did you support each of the desired Claims? • Go back and augment if necessary. Copyright FLYNN IP LAW 2017 89
- 90. Look for Gapsin Enablement • Can someone of ordinary skill in the art make and use each of the embodiments you presented? • You do not need to explain how to weld two pieces of steel together as that is conventional. Copyright FLYNN IP LAW 2017 90
- 91. But…. • If yourprocess calls for something that has never been done before – welding a glass rod to a steel rod – then you need to explain in enough detail to be enabling just how that is done. Copyright FLYNN IP LAW 2017 91
- 92. Step 10 • Searchfor the word “it” and replace the word “it” with the actual noun so that the meaning is clear. • Search for the word “invention” and strip it out. Use something like “teachings of the disclosure”. Copyright FLYNN IP LAW 2017 92
- 93. Step 11 • Geta patent attorney to review the draft application and provided detailed comments and suggestions. • This slide set is NOT a valid substitute for judgment and experience of someone that has written lots of patent applications and seen how others try to attack the patent application for sufficiency. Copyright FLYNN IP LAW 2017 93
- 94. NOTE DO NOT SEND THEDRAFT PROVISIONAL TO A PATENT ATTORNEY UNTIL AFTER YOU HAVE SPOKEN TO THE PATENT ATTORNEY AND THE PATENT ATTORNEY AGREES THAT THERE IS NOT A CONFLICT WITH OTHER CLIENTS OF THE PATENT ATTORNEY. Copyright FLYNN IP LAW 2017 94
- 95. Step 12 • Makerevisions based on input from the patent attorney. • It may be wise to repeat the cycle of review and revise one or more times. Copyright FLYNN IP LAW 2017 95
- 96. Step 13 File theprovisional patent application. • Inventor can do so by mail or by electronic filing – lots of specifics here so get help. • Inventor can pay for the patent attorney to electronically file the application. (Relatively low cost for this last step and it reduces the risk of an error). Copyright FLYNN IP LAW 2017 96
- 97. Provisional Patent Applications After Filing CopyrightFLYNN IP LAW 2017 97
- 98. Docket the Dates •The provisional application lapses a year after the official filing date. • Ensure that you have this date marked and pick a date two months ahead of that date to start work on a non-provisional application. Copyright FLYNN IP LAW 2017 98
- 99. Why start 2months early? • You may need to file patent applications in other countries beyond the US or file a Patent Cooperation Treaty application. The deadline for these filings is also 12 months from the filing date of the provisional application. • There may be a lot of heavy lifting to draft claims, create proper drawings, and lift application to non-provisional standards. Copyright FLYNN IP LAW 2017 99
- 100. May need tofile the provisional application more than once Beyond the scope of this webinar but you need to talk to your patent attorney if • Your fundraising or testing is going slowly and you won’t be ready to file the non-provisional by 12 months. May be advisable to refile the same provisional to restart the clock. Copyright FLYNN IP LAW 2017 100
- 101. THIS IS TRICKY •Refiling the provisional application without talking to patent attorney is not a good idea as you may need the filing date of the first filing of the provisional as you have subsequently done things that count as a public sale, public use or public disclosure. Copyright FLYNN IP LAW 2017 101
- 102. A provisional patentapplication is a just a snapshot. Copyright FLYNN IP LAW 2017 102
- 103. The filed provisionalpatent application does not expand… Copyright FLYNN IP LAW 2017 103 as you and your team add: –new embodiments, –new features, or –new use cases.
- 104. A provisional patentapplication is just a snapshot. • If your development leads to new embodiments or improved feature set after filing of the first provisional application – these new innovations ARE NOT PROTECTED BY THE EARLY PROVISIONAL APPLICATION. • You may need to file updated provisional applications to protect these innovations BEFORE Public Use, Public Sale, or Public Disclosure. Copyright FLYNN IP LAW 2017 104
- 105. REVIEW --- ProvisionalApplication is start of process not the end. • Need to file an updated provisional before public sale or public use (or even a publication) to add any evolving details of the product not already protected in a pending provisional application. • Really early stage company without funds may want to refile a provisional every three months to have an option to use one of these staggered provisional filings if money raising takes too long for the first provisional application to be converted. Copyright FLYNN IP LAW 2017 105
- 106. Time for Questions CopyrightFLYNN IP LAW 2017 106 [email protected]
- 107. 107 Kevin E. Flynnis a hybrid -- part engineer, part lawyer, part advocate, and part coach. He uses all these skills to be a patent attorney. Initially trained in both Biomedical Engineering and Mechanical Engineering, he later obtained a Master's Degree in Industrial & Systems Engineering. After working as an engineer and earning a Professional Engineering license from the State of North Carolina, he went back to school and earned his law degree with honors from Duke Law School. After a few years in patent litigation, including time spent with Fish & Neave in New York City, he moved to helping companies protect their ideas and avoid legal problems. With a broad engineering background, Kevin works with companies with a range of technologies including: A) medical devices & methods; B) Internet of things (IoT); C) Clean energy/green technology; and D) Consumer Goods. He helps clients decide where to spend their money to get the most value while seeking patents in the United States and abroad. Then he works collaboratively with the clients to create patent applications that are part required technical disclosure and part sales pitch. In addition to helping companies obtain protection, he works with companies to help them avoid trouble with patents owned by others. After working at a firm that specialized in assisting start-up companies, Kevin is very comfortable working directly with CTOs and CEOs in companies that do not have in-house lawyers. Kevin is a frequent speaker and commentator on intellectual property issues, especially those issues of particular relevance to entrepreneurial companies. He has been named repeatedly to the legal Elite for the category of Intellectual Property/Patent attorneys.