Yes, you can sell your invention even when it's only protected by a provisional patent application, but it's important to understand the implications regarding its value and the scope of protection.
Understanding Provisional Patent Applications
A provisional patent application (PPA) is a preliminary filing with a patent office, like the United States Patent and Trademark Office (USPTO). It allows an inventor to establish an early filing date for their invention and use the "patent pending" designation for 12 months. This 12-month period provides time to develop the invention further, conduct market research, seek investors, or decide whether to pursue a full, non-provisional patent application.
It's crucial to understand that a provisional patent application is not an examined patent and does not grant enforceable patent rights. It primarily acts as a placeholder for your invention, securing your priority date.
Selling Your Invention with a Provisional Patent Application
You have the ability to sell or license your invention at any stage, including when it's under provisional patent protection. This can be a strategic move for several reasons:
- Early Monetization: It allows you to potentially generate revenue or attract investment before investing significant time and money into a full patent application.
- Market Validation: Selling or licensing discussions can help gauge market interest and value for your invention.
- Attracting Investors: A provisional application demonstrates a serious intent to protect your intellectual property, which can be appealing to potential investors or partners.
Value Considerations
While you can sell an invention with a provisional application, its value is typically lower compared to an invention protected by a non-provisional application, an allowed application, or an issued patent. This difference in value stems from the level of protection and certainty associated with each stage:
| Protection Stage | Value Proposition for Sale |
|---|---|
| Provisional Application | Establishes early priority; "patent pending" status. Lower value due to lack of examination and enforceability. |
| Non-Provisional Application | Under active examination; stronger foundation for potential patent rights. Higher value than provisional. |
| Allowed Application | Patent is approved, awaiting fees and issuance. Significant increase in value due to near certainty of grant. |
| Issued Patent | Full, enforceable legal protection. Highest value due to granted exclusive rights. |
Buyers typically offer less for a provisional application because it carries inherent risks and uncertainties. They will need to undertake significant due diligence to assess the invention's patentability and market potential, knowing they will be responsible for converting the provisional to a non-provisional application within the 12-month window.
Key Considerations When Selling
- Limited Protection: A provisional application offers no immediate enforceable rights. The buyer cannot sue infringers based solely on a provisional filing. The value lies in the priority date it establishes.
- 12-Month Deadline: The buyer (or the seller, if retained) must file a complete non-provisional patent application within 12 months of the provisional filing date to maintain the priority and potentially secure full patent rights. Failure to do so will result in the loss of that priority date.
- Scope of Disclosure: Ensure the provisional application adequately describes the invention to support future claims in a non-provisional application. Any new features or developments made after the provisional filing might require a new application to protect them.
- Due Diligence: Potential buyers will conduct thorough due diligence, examining the invention's novelty, non-obviousness, utility, and market viability. They will also assess the quality of the provisional application itself.
How to Sell Your Invention
Selling an invention with a provisional patent application typically involves:
- Assignment of Rights: You can formally assign all ownership rights of your invention and the provisional application to another party. This means the new owner will be responsible for pursuing the non-provisional patent application and all future development and commercialization.
- Licensing: You could license the rights to use, make, or sell your invention to another party while retaining ownership. This often involves royalty payments or upfront fees. However, licensing an invention based solely on a provisional application might be less common due to the lack of enforceable rights.
It's advisable to consult with an experienced intellectual property attorney when considering selling or licensing your invention, regardless of its patent status. They can help draft appropriate agreements and ensure your interests are protected.
