Sunday, February 3, 2013

Keep Your Mouth Shut, Or Else: The America Invents Act (AIA) and Provisional Patent Applications

A myth seems to have already developed around the AIA.  That myth stands for the idea that an Inventor/Entrepreneur can defensively publish their ideas and subsequently file a provisional patent application covering them while relying on the “derivation” provisions of the AIA. 

Not so fast. 

The myth stems from the AIA’s provisions regarding those who “derive” their patent application from another’s public disclosures.  More particularly, the AIA sets up a tribunal to hear derivation proceedings to determine whether one applicant derived their application from some other inventor’s public disclosure of it. 

To understand the ramifications of relying on these derivation proceedings, you need to ask, what happens if someone does “derive” a subsequent patent application from your idea.  First, as always, be aware that provisional applications almost always contain holes (omissions if you will).  If one of those omissions involves some central (or lucrative) part of your idea, your provisional application will enable no coverage for you in that area. 

Worse still, if someone does derive an application from you, and their application covers your omission, under AIA ‘s first-to-file rule they can ultimately obtain the coverage while you might not.  If that is not bad enough, assume that you do have evidence of their derivation of your idea.  Even under those circumstances, you will have to launch and prevail in a “derivation” proceeding.  The other side will likely contest these proceedings.  This situation means that you will find yourself fighting a mini-trial to recover your idea at the likely cost of tens of thousands of dollars. 

A word to the wise: until you have a full-up non-provisional application on file, keep your discussions under non-disclosure agreements.  The AIA contains many traps for the unwary. 

We at the Villhard Patent Group would enjoy speaking with you about your ideas and business plans for them.  For more information write us at or visit our website at

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