This post is part of our Ask Me Anything series “IP Law for Femtech Founders” with Marshall, Gerstein & Borun Giordana Mahn.

How can one discuss their prototype while protecting the concept? Customer base insights are required to see if there is even a need/want. Should a preliminary patent be filed prior to any conversations/insights are had/gained?

In addition to considering CDAs as provided here, filing a preliminary patent application (like a provisional application in the US) is a good idea if you are not sure what the end product may look like after a collaboration with a third party.

In the US, you can file a provisional patent application, which is like a place-holder in the patent office to make sure you have an early claim to your invention.  However, a provisional patent application cannot issue into a patent.  It just gets you in the door before you file a non-provisional application, which you must do within a year from filing the provisional application.  The non-provisional patent application has more filing requirements, setting the back and forth between the patent office in motion, and which can ultimately lead to issuance of a patent.

Filing a provisional patent application can be a great idea before entering in conversations with a third party to ensure your placement in the patent office line of priority.  There is no limit on the number of provisional applications you may file with the US patent office before reaching the one year deadline because the patent office doesn’t examine provisional applications.  The only thing that may change with new developments is your priority date, which is essentially your earliest claim to your invention recognized by the patent office.  A new development, for example, may push forward that priority deadline if significantly different and not covered by the provisional application.  Keep in mind that claims of the later non-provisional application are only entitled to early filing date of the provisional application if the claims were fully disclosed in the four corners of the provisional application.  A provisional patent application that is too flimsy (i.e., not enough descriptive support) may not be effective to support a later claim in the non-provisional application.

DISCLAIMER:  These comments do not necessarily reflect the views of Giordana Mahn’s firm of Marshall, Gerstein & Borun or its clients, and should not be relied upon as legal advice for any particular situations.  Providing these responses is not intended to and should not be considered as reflecting an attorney-client relationship.

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