Obtaining a patent before they submit the invention for licensing company is generally asked by the inventor. As you already know moving forward with a patent doesn’t make a lot of sense if the invention is not likely to be protectable by the patent. It is always told to the inventors and entrepreneur that the best invention to patent is one which yields money regardless of whether you ultimately obtain a patent. The whole aim is to make money and investing in a business or to obtain a patent that make sense if there is a reason to believe that more money would be made than spend. So taking this into consideration i would suggest market consideration factored into analysis. Having said that without at least a patent pending you have absolutely no protection unless you obtain a signed confidentiality.
Without patent pending you also do not have anything to license other than the idea that lacks tangible boundaries. While that is not always an impediment to moving forward, the licensing of an idea can alone scare many companies. In fact licensing to an idea without tangible boundaries as defined in at least provincial patent application can scare companies to a point where some perhaps many wont do it. So an idea is worth something to some people but an idea that has taken more shapes and is really an invention is worth even more. An invention that has been defined in provincial patent application is worth more.
Benefits of Provincial Patent Application
The provincial patent application does not give you any right other than to say you have a patent pending, it defines your invention by disclosing the parameters of the invention and allows you to do certain things without fear of losing the right to obtain a patent later. If for some reason you do not file a patent application first perhaps you can take advantages of the exception, but do yourself a favor and never assume you have a grace period.
If suppose you were going to file a patent application but then you started to make money with the invention so you took a risk. This delay cost me the ability to seek most broad claims. The fact that you invented it before the public use by another person is of no importance because you did not file a patent application sooner. You were prevented form obtaining the patent on that broad aspect of invention. This can and happen with more frequency than you might aspect. Because the activities of unknown third parties can do create a bar to obtaining a patent the best advice is to move forward as quickly as possible. This is why patent attorneys frequently suggest the inventors at least file a provincial patent application as early as possible. You also prevent yourself from doing things that unknowingly could lead to no patent ever being able to issue. You can also typically talk more openly about the invention, you can start to sell it and use it publicly. It would still be best to get a confidentiality agreement at least you can know that you have provisional patent application on file that has established your priority with respect to invention.
Conclusion
Of course the strategy requires filling, thorough and sound provisional patent application. The only benefit in filling a garbage provisional that does not completely describe the invention is to be able to use the term patent pending without committing fraud. If however you really want to do things right and use the provisional patent application as an important tool that can support the issuance of the patent later you absolutely must describe the invention to greatest extent possible.
Having some kind of strategy to deal with lack of confidentiality is likely to be going critical at one point or another during your journey from invention to successful commercialization. This is because many times those you most want to share your invention with will simply not sign a confidentiality agreement. Essentially investors who sees a lot of ideas and invention are justifiably reluctant to sign the confidentiality agreement. Thus if you want to show someone your invention you have weigh the pros and cons. If you at least have a patent application pending you have defined your invention and memorialized with a filling date a date upon which you were in possession of invention described. Thus, you have a solid priority date backed up by a Unites States Patent Filing.
