VIDEO: Why File for a Provisional Patent Application?

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TIPS FOR DECIDING WHETHER TO FILE A PROVISIONAL v. A NON-PROVISIONAL PATENT APPLICATION

PROVISIONAL PATENTS APPLICATIONS

What is a Provisional Patent Application?

First, let’s revisit the non-provisional patent. A non-provisional patent, once issued, provides a 20-year protection on an invention. In order to be granted, a non-provisional patent application will undergo an examination process that can take over 18 months (this can be reduced, under Track 1 filing status, to less than 6 months!)

A provisional patent application, on the other hand, is essentially a priority date placeholder. This type of application allows an inventor a 12-month window to file a non-provisional patent application with a “patent-pending” status without undergoing examination. It is important to note that this particular filing will never become a granted patent without a ‘conversion’ to a non-provisional patent application.

Additionally, a provisional patent application only secures your priority date for a utility invention and cannot be filed for design patents.

WHEN IS A PROVISIONAL PATENT APPLICATION BENEFICIAL?

A provisional patent application can provide a means of inexpensive patent protection and secure a priority date for a non-provisional patent. This is particularly important in the U.S. because patent rights are determined by the first inventor to disclose or file on an invention, not the first inventor to conceive of the invention.

It is important to have your provisional application written thoroughly by an IP professional, as the provisional application can serve as the basis for both domestic and international claims.

WHAT ARE THE ADVANTAGES OF A PROVISIONAL PATENT APPLICATION?

Provisional applications are kept confidential, enabling a patent pending status without having to publicly disclose the invention.

Provisional applications enable a level of creative freedom in the claimed subject matter, there is no obligation to claim everything disclosed in a provisional application.

Provisional applications can be used as the basis for multiple filings.

  • Multiple ideas can be within a single provisional application. Many separate non-provisional applications can be filed on each claiming priority to a single provisional application.
  • Once one non-provisional application has converted from a provisional application the provisional application can then be examined. This results in the publishing of all claimed ideas within the provisional application.
  • Separate provisional filings can be used to ensure not all aspects of an invention are disclosed upon conversion.

You can re-file provisional applications to renew the pending status.

  • Refiling a provisional application loses the initial priority date of the first filing.
  • To qualify for renewal, the provisional application must have not been converted or disclosed to the public within the 12-month period prior to refiling.

CONSIDERATIONS FOR WHEN TO FILE A PROVISIONAL PATENT APPLICATION?

1. Perform a Patent Search.

a. A patent search provides an overview of existing technology and intellectual property surrounding the invention.

b. They also help to avoid applying for ideas that already exist.

2. Analyze the Development of the Invention.

a. Patent search professionals can assist in determining conceptualization.

b. Early-stage projects may wish to choose non-provisional applications due to their flexibility and relative inexpensiveness.

3. Assess the Funding of the Project.

a. Early-stage companies shouldn’t be spending too much of their budget to file patents.

b. Provisional applications provide a cost-effective means of securing intellectual property rights for your invention.

4. Consider Your End Goals.

a. How soon do you need to receive a patent?

b. If licensing or enforcement of the is part of the business strategy, a well-funded project should file a non-provisional patent application and even consider possible expedited examination options.

c. Patents play an important role in the valuation of a company

5. Also Consider a Trade Secret.

A provisional application provides a means to keep an invention confidential and prevent public disclosure of the invention. However, consider a trade secret for your invention if your competitors would not be able to easily reverse-engineer your invention.

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