REASONS TO FILE A PROVISIONAL PATENT APPLICATION

Depending on who you speak with, you may hear that filing a provisional patent application is always a bad idea or that it is always the best option. Many companies have questioned whether filing a provisional application is worthwhile — or whether filing a non-provisional application straight is smarter.

Let’s look at what a provisional patent application is, why you should file one, and the frequent mistakes to avoid when filing a provisional patent application to see if it’s right for you.

What Is A Provisional Patent Application?

In comparison to a non-provisional patent application, a provisional patent application is a simpler, more informal filing. You don’t need to incorporate formal claims or an inventor declaration, for example.

A provisional application, unlike a (formal) non-provisional application, expires one year after filing, is never considered for patentability, and does not mature into an issued patent.

A provisional patent application can be used to file a patent application with the USPTO and other foreign patent office’s ahead of schedule. However, if you want to get a patent, you must file a non-provisional patent application within one year.

Provisional applications aren’t always the best course of action. Provisional applications, on the other hand, can be utilized as a strategic tool in creating a patent portfolio in the correct conditions, and they’re typically preferable to filing no patent application at all.

Reason to File a Provisional Patent Application

You probably won’t need to file provisional patent applications if your company has infinite finances and an army of patent lawyers ready to create applications at a moment’s notice (you know who you are).

Provisional patent applications, on the other hand, can assist most businesses to obtain acceptably (but not necessarily perfect) legal protection under limited and unpredictable situations. Here are some of the reasons why you would wish to do so.

A. Establish an early filing date

Patent applications are considered in the United States and almost all other countries depending on their filing date. The patent office will evaluate the merits of your patent application against all previous art as of the patent application’s filing date.

(In a nutshell, “prior art” refers to all patents and patent applications filed before your filing date, as well as all publications, products, and activities that were publicly available before that date.) As a result, deciding on a filing deadline as soon as possible can be crucial.)

You can establish the “effective” filing date for a non-provisional application filed later by filing a provisional patent application. This can increase your chances of success by removing any potential prior art that emerges after your provisional application is filed.

Provisional applications can also be utilized to obtain a “priority” filing date for applications filed in other countries that are members of the Paris Convention if they are filed within a year of the U.S. filing date. In many foreign nations, where there is no “grace period” for public disclosures before the patent application is filed, an early filing date is very significant.

B. Documentation for competitive or defensive purposes

For competitive or defensive objectives, a provisional patent application can be utilized to formally document your company’s technical developments as of a specific date (specifically, the filing date).

Your provisional application, for example, could be used as prior art against a competitor’s later-filed patent application. In other words, whether or not you receive a patent, your provisional patent application may prevent your competitors from obtaining a patent covering your technology.

By filing a provisional application before meeting with a collaborator or attending a conference, for example, you can demonstrate that the subject matter in the provisional application was developed independently of the collaborator’s input or information gained from the conference.

Finally, provisional patent applications allow you to designate your items and publications as “patent pending.” This serves as a warning to potential competitors that if they enter your jurisdiction, they may face a patent infringement claim.

C. Work within significant time or budget constraints

Provisional patent applications include fewer formalities, lower filing fees, and almost no formatting requirements. As a result, a provisional application can typically be prepared and filed faster and for less money than a non-provisional application.

Businesses frequently find themselves in need of a patent application as a result of a fast-approaching public presentation or demo, or a pending product launch. Provisional applications can be prepared and filed swiftly in certain cases as a legal “best-effort” to achieve a filing date.

Alternatively, startups may not have sufficient funds to immediately hire a patent attorney to prepare a full formal patent application. Provisional applications allow you to create the best patent application possible within the limits you have, and then refine it when you file the non-provisional application.

In both of these circumstances, filing a provisional application might provide some protection, which is often preferable to filing no patent application at all.

D. Gain time to refine your idea

To create a series of provisional applications, provisional applications can be revised and re-filed many times over a year. This enables you to track incremental progress throughout the R&D process.

Although the enhancements won’t have an earlier filing date, they can still be included in a single patent application with the original invention, rather than needing a separate file.

You’ll also be able to maintain the anonymity of your work. Provisional patent applications are not disclosed, so you don’t have to worry about your idea being shared with the public if you don’t file a non-provisional application.

E. Assess the value of your invention

Many companies prefer to file a patent application early in the development process, just in case their invention becomes profitable.

While the cost of a formal application may not be justified, the potential for great value may warrant a small investment in a provisional application. You can even capture later advances in the non-provisional application if you improve the invention before filing the non-provisional.

COMMON MISTAKES WHEN FILING A PROVISIONAL PATENT APPLICATION

Provisional patent applications have a lot of advantages for businesses in certain situations, but if you’re thinking about filing one, be careful! Here are some common mistakes made by applicants.

• Failing to budget for a non-provisional filing

If you don’t file a non-provisional application during the next 12 months, your provisional application will expire.

Even though a provisional application can give a low-cost, short-term solution, you must also file a non-provisional application to invest in the long-term solution.

Additionally, if the provisional application was prepared under time constraints or on a limited budget, a good non-provisional application may need a significant amount of effort and investment.

• Submitting an inadequate application

Only inventions that are adequately detailed in the preliminary application are eligible for the benefits we’ve discussed. Your provisional application will not give the protection you require if you do not provide a complete written disclosure and do not have a patent attorney construct the provisional application in a way that will support broad claims in the non-provisional application.

To put it another way, if your provisional application does not support all of the facts in your non-provisional application, you will not be able to take advantage of the earlier filing date for any new or updated details in the latter.

• Feeling a false sense of security

And if you’re lulled into waiting a full year to file a non-provisional application, you risk exposing the application to the more prior art for claims that the provisional filing didn’t fully support.

It’s in your best interest to work with patent attorneys who have the legal and technical expertise to lay the groundwork for an ironclad patent portfolio down the road, no matter where you are in the process of developing your patent strategy.