Proof of Concept “Time Clock”
Are you mindful of the clock "ticking" on your provisional patent application?
When a technology-based product concept emerges within the university environment, inventors commence work on a prototype armed with varying degrees of knowledge about the intended customer and market. If you are not an expert in the area of application you are considering, you should be thinking of the prototyping project as a dynamic process — where your research team expects to iteratively cycle back and forth between a reasonable amount of customer needs-oriented research and further design and prototype development.
However, there is a time constraint involved in this prototyping cycle.
Assuming a “provisional” application is filed soon after a disclosure is made to the tech transfer office, the research team then has approximately one year to demonstrate potential commercial value. This is due to the fact that a provisional application must be converted to a non-provisional (“full”) patent application before its one-year expiration. As that decision date approaches, the quality and current relevance of the provisional may be re-evaluated.
NOTE: If you are contemplating the submission of an invention disclosure, or are currently involved in the development of a provisional application, see “What is the meaning and value of provisional patent applications?” . Here it is emphasized that the inventor should take ownership in assuring the application is adequately “enabling”. Otherwise, the opportunity for subsequent conversion to a full patent application may be jeopardized.
Patent “Conversion” Decisions
Going forward with a non-provisional U.S. patent filing has a cost associated with it that ranges from approximately $8,000 to $20,000 depending on the complexities involved. In order to rationalize an investment of this order, universities often insist that a potential licensee be identified, and would even prefer that discussions be underway with such a candidate.
Filing costs for international protection under the Patent Cooperation Treaty (PCT) are significantly (∼25%) more expensive, but can vary widely. If a PCT filing is used, at the 30 month anniversary of the first filing (likely a U.S. Provisional Application for Patent), individual patent applications must be filed within each country where rights are to be sought. Because certain countries require patents to be filed and argued in their national language, translations are often required and can again add considerably to the cost. Because of these enormous costs, most universities are resistant to entering the PCT process.
The 12 month anniversary following a provisional patent filing will come quickly. For assistance in preparation for the decision-making that will soon take place, you may want to review the relevant sections of the Project Status Questionnaire.
The constraints described above dictate that an inventor who is interested in commercialization must rapidly develop a prototype ...
University researchers must be very efficient in demonstrating concept feasibility within several months from invention disclosure, in order to attract a potential licensee before the provisional patent application expires.
From the iterative research-design-prototyping process described above, a product prototype evolves with a significantly better chance of successfully demonstrating proof-of-concept, while matching real market needs − on the first try! It’s not always clear in the beginning which commercialization path should be pursued, but the tentative choice of out-licensing vs new company startup could impact your prototyping goals. In other words, the feasibility demonstration expectations of your target “customer” (industry licensee vs investor) may be very different.
If you have tentatively decided to pursue the startup route…
You should first invest a reasonable amount of time in the assessment of target market customer needs, as well as the various business model options that might exist for your product concept — before you begin fine-tuning of your prototype.