I watch Shark Tank pretty regularly and I always perk up a little when someone mentions that they have a patent. Most of the times, it's not quite true. What most of the contestants have is a pending patent application, and in a majority of those cases, they have a provisional patent application pending. But these contestants come on the show with a lot of confidence because they know that most of the sharks would give more thought to investing into their company once the "patent bomb" is dropped.
If a contestant has a patent application pending and an offer is made, the offer is usually contingent upon receiving a registered patent. This may sound great to a lot of people because the offer is on the table and all you would have to do is get your application registered. But this is not as simple as it sounds. If you have a provisional pending, that means that you will still have to file a non-provisional patent application. Then your non-provisional patent application would need to be examined. If you request expedited examination (which is something you should probably do if you have an investor waiting), then you will receive a final disposition in approximately 12 months. If you don't request an expedited examination and/or you already filed your non-provisional patent application without requesting one, then it could be a couple of years before your application is examined. You can request expedited examination when you file an RCE, however. Then you will get the next final office action within 12 months of filing your RCE.
But back to my main point- you would have to wait a while before seeing that offer through. This can be highly disadvantageous if you need the money right now. Sometimes a shark may offer a loan if a contestant needs the money but usually it's a losing situation for the contestant because he/she has to pay back the loan with interest and/or he/she is still asked to give up a percentage of his/her company. Then it comes down to a business decision. Is the loan worth the business connection and the expertise of a shark?
I usually do a 10-15 minute consultation before taking on a project and a lot of people are worried about patent infringement from the beginning. Not about infringing upon other people's patents, but about others infringing upon their future patent. It's often difficult to answer questions regarding what would happen if someone infringed upon their future patent (when there is not even an application pending). The best that I can respond is to say that I would have to investigate and conduct an infringement analysis to decide whether there is actually an infringement, and if there is: 1) send a cease and desist letter; and/or 2) dive into a lawsuit.
When filing a patent application, the first thing you should be worried about is the patentability of your invention, not patent infringement. This means making sure that your invention: 1) qualifies as a patentable subject matter; and 2) is patentable in light of prior art. There are other things to take into consideration as well of course, such as enablement, statutory bar, and inventorship, among other things, but we won't go into that right now.
How do you know that your invention is patentable? Well, you won't know for sure (even when your application is pending) because the USPTO makes the ultimate decision on whether your invention will be allowed or not, but the best thing to do is to conduct a patent search (before filing a patent application and sometimes even during). And if your patent search comes with a patentability analysis*, then you may be able to identify some novel features of your invention to highlight in your application.
You might be a little bit confused when you receive this in the mail.
Did you know that you can conduct patent searches on the USPTO website? I never actually took the time to review the steps outlined in the tutorial provided by the USPTO, but I took a quick look at it recently. Basically, this is what the USPTO recommends that you do:
One of the first things I've learned as a legal intern was: "Notice of Incomplete Application is bad, and Notice of Missing Parts is not great."
Your first thought may be, "Well, if my application has missing parts, isn't it technically incomplete?" So it's important to know the difference between the two and know when you would receive one notice or the other.