When preparing their pitch decks for investors, venture capitalists, marketing and recruiting key players, Silicon Valley entrepreneurs and tech companies often ask: “How to cite or showcase a provisional patent application? “
Quick answer: Ideally “Patent Pending” on the pitch deck is good enough. The moment a provisional United States Patent Application is filed in the United States Patent & Trademark Office, the federal government gives all interested parties fair warning that a U.S. patent for an idea has been filed and is currently under review by the US government.
Depending on the technology, filing for a patent is a box that entrepreneurs check and that investors eventually look for as the company scales in size. In my experience, Silicon Valley is often an exception where a few rounds of funding have passed before a patent is applied for -if at all- as the circumstances are often complex. In software tech, moving to market and scaling quickly are often perceived as of greater importance in some tech industries.
Medium answer: Informally, consider using only the “Title of the Provisional Application As Filed”, when showcasing a provisional patent application for investors on a term sheet, merger and acquisition event. This can also be used on an individuals’ resume or linkedin profile.
Perhaps if a venture fund insists on reviewing the contents of the provisional application, then one’s instance on a Non Disclosure Agreement should be at a minimum. Ideally first run the fact pattern by a legal professional to help you carefully assess the situation at hand.
Until a deal is inked, any investor may be shopping around for ideas in some situations that are not to the inventors benefit. The title should give most people the general idea of one’s technical abilities as showcased so as to warrant such an invention.
Longest answer: The very name “provisional” application pretty much says it all. This type of US Patent Application is transitory or a “place holder” patent before a standard and formalized non-provisional US patent application is then filed.
Inventors have exactly 12 calendar months to convert the contents of a provisional application to a non-provisional application also referred to as a standard or utility patent application.
Most independent inventors and startups file a provisional patent application to further perfect their initial ideas, before a standard patent application is filed on the anniversary. During this time their intellectual property is under the moniker and public warning of “patent pending”.
For some startups, the value of the public warning of “patent pending” may have greater business value than actually obtaining a patent grant from the government. The key reason is that effective marking of “patent pending” warning status enables an entrepreneur to get a head start over any competition. They can cheaply and quickly gain market share over any would-be competitors.
To this end, most entrepreneurs do not typically reveal or publish the contents of their provisional or non-provisional applications while the application is being reviewed by the US government.
The default option for a domestic US patent application only is 100% secrecy while reviewed by the government Patent Office. Keeping this default option keeps competitors and their Patent Attorneys guessing what the actual invention will be if successfully issued as they cannot gain access to both a provisional and nonprovisional application.
Inventors and their attorneys will be given the filing serial number of the provisional application and filing date from the USPTO. They are strongly encouraged not to publically divulge these numbers. This prevents access to the application being wrongfully obtained – it has and could happen as the common scenario is wrongful access by ex-employees.
For Silicon Valley startups and entrepreneurs “patent pending” labeling while preserving the default secrecy of the application process from the US government is advantageous as resources are limited. Accordingly, for most startup situations with limited resources, it would often be poor business judgment to divulge the information during patent pending status so as to legally fight over ownership of ideas with other competitors in court.