By George Likourezos, Esq.
Quantum computing startup founders should know that every patent system in the world is a first-to-file system. This means that the inventor who files a patent application on a particular quantum computing technology before another inventor has the first right to the grant of a patent. Thus, it is important for quantum computing startups to think about filing a patent application on their technology as early as possible, and a provisional patent application is the perfect vehicle to do so.
Patent Prosecution Overview
To understand the benefits of a provisional application, a broad overview of the patent prosecution process is merited. The first step in obtaining a patent is the conception and reduction to practice of your invention, which does not require a working model or system, but rather demonstrating the concept can be shown to work through detailed drawings, formulas, and the like. Next, a patentability search of prior art references is highly recommended, as a search allows the patent drafter to write an application that best defines the invention over the prior art, speeds up prosecution by preempting rejections, and improves the application’s defensibility. A patent application will then be filed as either a provisional patent application or a non-provisional patent application. A provisional application is considered a “placeholder” that will allow a non-provisional application to claim priority if filed within one year. Once the non-provisional application is filed, patent prosecution begins, which lasts from 2-5 years.
I. Benefit #1: Obtaining an Earlier Filing Date
Obtaining an early filing date is pivotal in patent prosecution because it prevents a patent examiner from citing references published between the provisional filing date and the non-provisional filing date. Such references, if applicable, may alter the protectable scope of your filing or potentially prevent your application from maturing into a patent. Since the non-provisional application will have the benefit of the provisional application’s filing date, the applicant may rely on the earlier date to prevent those cited references from being used against the application.
A provisional application can be filed when there is sufficient information on the technology being developed. Additional provisional applications can be filed after the initial filing to further describe current or new inventive features, different aspects of the invention, or provide data.
Within one year of filing, the provisional application must be converted to a non-provisional application to maintain priority rights. The non-provisional application will claim priority to the initially filed provisional application, along with any other provisional applications that were filed within one year from the initial provisional application filing date.
For this reason, it is important to include as much information known at the time of preparing the provisional application to ensure that the invention is adequately described. The applicant cannot rely on the earlier filing date of the provisional application to antedate a cited reference for a particular inventive feature if that inventive feature was not described in the provisional application.
II. Benefit #2: Early Patent Pending Status for Investors
The earlier you file, the earlier your quantum computing technology will be granted the status of “patent pending.” This status is highly attractive for investors, since it demonstrates that you believe your technology is novel and that you took the initiative to file a patent application. Additionally, the provisional application, if organized as a technical paper with figures, can be used to explain your technology to investors under a confidentiality agreement.
III. Benefit #3: More Time for Critical Business Decisions
Even if you decide not to convert your provisional application to a non-provisional application, the provisional application will not be published or examined. Therefore, even if you believe your technology can be kept as a trade secret, it is advisable to file a provisional application to decide at a later time if converting to a non-provisional application is the best course of protection. Moreover, if you do convert to a non-provisional application, and have no plans to seek patent protection outside the United States, you can instruct the United States Patent and Trademark Office to not publish your non-provisional application until it issues as a US patent.
Additionally, filing a provisional application allows your team to have an early discussion about your developing quantum computing technology with a patent attorney. The patent attorney’s understanding of the technology is critical to performing a thorough patent search to find references which may be relevant or similar to the technology you are developing. Finding damaging references prior to prosecution will save your company thousands of dollars in fees and wasted years of waiting for an avoidable rejection. Moreover, finding damaging references early will buy time to change the course of technology development if the attorney determines the reference will bar the technology from patent eligibility.
Provisional patent applications are an essential tool for protecting your invention at the early stages. Besides the top three points above, provisional applications further provide comparatively lost costs to first-time non-provisional filings, time and cost savings to avoid semantic or formal patent office rejections, and more. Provisional applications allow your company to waste no time, with little capital, in developing a robust strategy to protect your vital intellectual property assets. However, it should be noted that the United States Patent and Trademark Office has several nuances and complexities, which is why I strongly recommend speaking to a licensed patent attorney so your startup may reap all the benefits of a provisional patent application.
George Likourezos is a partner and patent attorney at Carter, Deluca & Farrell LLP in Melville, NY, whose practice encompasses all aspects of patent, trademark, and copyright law. He represents startups, universities, and large multinational corporations, and is an IP mentor to several quantum computing startups.
August 5, 2022