Beyond the PPA: A Strategic Guide to Validating Your Invention and Market in 12 Months After Filing Your Provisional Patent Application

A proper assessment of the technology and market can empower inventors to make informed decisions about advancing to a non-provisional patent application, filing a Patent Cooperation Treaty (PCT) application, and/or filing a direct foreign patent application by the crucial 12-month deadline.

This blog post aims to guide inventors through this journey, highlighting the dual focus on technology validation and market validation to ensure that their invention stands on firm ground.

Validating your Technology

Before diving into the deep end of patent protection and business planning, it is crucial to confirm that your technology is as revolutionary as envisioned.

The months following the filing of a PPA should be utilized to validate the technical feasibility of the invention. This means testing, refining, and possibly iterating the design to meet the desired specifications and functionality.

Validating the technology not only confirms that the invention can be developed and used as intended but also lays the groundwork for a potentially stronger patent application.

Validating the Market for your Invention

An invention's success isn't solely determined by its novelty or technical feasibility. The market conditions play an equally vital role.

During the 12 months post-PPA filing, inventors should also dedicate time to understanding the market landscape for their technology. This includes identifying target customers, analyzing competitive products, and assessing market demand.

Market validation aims to ensure there's a sufficient audience willing to pay for the invention at a price that justifies the costs of further patent protection and business development.

A Sample Chronology of Steps/Actions for your Patented or Patent-Pending Invention

Navigating the post-PPA filing period requires a well-structured approach to navigate the steps to validate both your technology and your market. Below is a sample chronological guide to the key actions inventors should consider taking within the 12-month window once their PPA is filed and their invention is “patent pending.”

These steps are presented in a specific order, but you might find your circumstances justify changing the order in which you complete these steps. That’s okay, as long as you work diligently to complete all the applicable steps. You might just find your success begins to appear before you even decide to pursue the full patent process.

WEEK 1. Celebrate

CONGRATULATIONS!! Enjoy what you have accomplished so far. It really is a great accomplishment to get “Patent Pending” status.

WEEK 2. Plan Ahead & Patent Ratings

Take some time to organize your paperwork, files, and emails from your provisional patent application, innovation disclosure form, and related memoranda. Also, create a list of the relevant calendar dates and deadlines, including the steps within the plan. Go through the steps and mark off any you have already completed, then plan out which steps you will do, and which order you will do them.

Also, make sure you inventory your inventions. You probably described different versions of your invention in your PPA, or maybe even multiple inventions. Make a list of your inventions and rate them by importance.

NOTE: Intellectual Strategies can help you evaluate and track your inventions.

WEEK 3. Patent Assignment

Make sure your complete any necessary assignments to show that the inventors have transferred their ownership in the patent to the business or property entity.

NOTE: Intellectual Strategies can help you make sure ownership assignments are completed and recorded properly.

WEEK 4. Theory of Value Creation

Commit to the problem/solution or entertainment factor your innovation will address.

WEEKS 5-6. Market Research

Use a top-down market research approach to identify your market opportunity.

WEEKS 7-8. Innovation Search

Just like your patentability search, continue to search the internet patent databases, and marketed products related to your innovation. This will help you continue to perfect your understanding of the technology and your target market segment. Keep a detailed history of your search, including similar features/benefits, competitors, key players, business models, etc.

NOTE: Intellectual Strategies can help you perform a patent landscape search.

WEEKS 9-10. Competitive Advantage Matrix

Evaluate direct and indirect competitors to generate a feature/benefit matrix.

NOTE: Intellectual Strategies can help you analyze the distinctions between your invention and other products on the market.

WEEK 11. Confidentiality

Get a standard non-disclosure agreement (NDA) and use it consistently. Only disclose what is necessary, but no more than what is covered by your filed patent application.

NOTE: Intellectual Strategies can help you with our simple non-disclosure and confidentiality agreements.

WEEKS 12-15. Pre-Sell Your Invention

Use a bottom-up market research approach to make a list and confidentially survey at least 30 potential customers to perform a minimum viable product (MVP) analysis.

WEEKS 16-17. Start Tracking Your Trade Secrets

Identify trade secrets and key resources (partners, team, skills, lists, documentation, expertise, etc.) that will enhance your patent value and establish a plan to protect them. You might find trade secrets provide a parallel path to protection based on theft of secret information, in addition to infringement of published patent rights.

NOTE: Intellectual Strategies can help you implement a trade secret program in your business.

WEEKS 18-19. Identify Your Brand and Business Model

Frequently, a company’s brand can become as valuable as, or more valuable than, its technology. Choosing your brand is more than just a symbol or phrase—it underscores the consumer experience you want to deliver with your products and services.

NOTE: Intellectual Strategies can help you protect your names, brand, and logos with federal trademark registrations.

WEEKS 20-23. Functional Prototyping

Define a Functional Spec and build a functional prototype. A functional prototype allows you to work out details in the function of your technology and the compelling presentation to investors, consumers, and potential channel partners.

WEEKS 24-27. File Follow-on Provisional Patent Applications

If any of your work so far had led to new discoveries or critical improvements for the key features/benefits of your invention, consider filing a follow-on PPA to capture IP around those improvements.

NOTE: Intellectual Strategies can help you  efficiently get “patent pending” status for your important improvements and updates.

WEEKS 28-31. Establish Costs and Pricing for Your Invention

Identify and confidentially contact at least 5 potential manufacturing partners to establish a draft manufacturing cost analysis. Perform lots of due diligence when vetting potential partners because of the amount of data you will end up sharing with them.

WEEKS 32-33. Sell Your Invention

Make a list and confidentially contact at least 10 potential wholesale buyers/distributors/licensees to buy/license your technology (not just your innovation). Consider all the paths to “selling” your technology, including up-front sale (100% transfer of rights), partner licensing (partial transfer of rights), or manufacturing and distributing actual products.

WEEK 34. Foreign Filing Plan

Identify geographic markets of potential manufacturers, competitors, and customers.

NOTE: Intellectual Strategies can help you establish a realistic plan for getting foreign patent protection.

WEEKS 35-38. Fund Your Invention

Generate a draft funding strategy to cover expenses for COGS (cost of goods sold) and SG&A (sales and marketing, general, and administrative, including legal). Information and preparation at this stage will help direct you when raising funds or allocating your own funding. If you need outside funding, plan to spend a lot of time pursuing equity and/or debt funding sources).

WEEK 39. Non-Provisional, International, and Foreign Patent Rights

Provide a retainer and timely instructions to legal counsel to prepare and file utility patent application(s).

WEEKS 40-52. File Your Non-Provisional Patent Application

Work with legal counsel to finalize and file your US utility non-provisional patent application and any PCT and/or foreign patent applications.

NOTE: Intellectual Strategies can help you move forward with all your patent work.

From initial technology and market validation efforts to preparing for future patent application filings, this timeline offers a roadmap for inventors to follow, ensuring they are well-prepared when the deadlines come due for filing a non-provisional (US), PCT, or foreign patent application.

In Summary

The 12 months following the filing of a Provisional Patent Application are both exhilarating and challenging for inventors. By focusing on validating both the technology and the market, inventors can build a strong foundation for their invention's success.

This period of due diligence and strategic planning is crucial for making informed decisions about pursuing a non-provisional patent application and/or an international PCT or foreign patent application.

With a clear understanding of the steps involved, inventors are better equipped to navigate this journey, turning their innovative ideas into protected, market-ready technologies.