Provisional Patent Applications: Myth, Reality, and Pitfalls

Filing a provisional patent application helps you to get your foot in the door by providing the earliest possible filing date and gives you a year in which to continue developing your invention and/or raise the funding necessary to make the more substantial investment of time and money required to file a non-provisional patent application — it is essentially a placeholder.

The filing date is very important in establishing patent rights, particularly as it pertains to competition. The earlier your filing date, the greater your chances of obtaining legally enforceable patent rights in your invention. Another way in which provisional patent applications can be used to your advantage is to continue filing provisional applications as you develop your product and combine all of them into one utility patent application. In this way, you accumulate filing dates that are sooner in time than the utility application.

However, there are many common misconceptions regarding whether, when, and how to file a provisional.  These include:

  • Presuming you can file a provisional patent application at any time without consequence – applications must be filed before any type of public discussion occurs, or you may lose foreign filing opportunities and establish a one-year deadline for filing a US application.
  • Presuming you can file whatever you want as a provisional patent application – although you can file a less formal document as a provisional than you could file as a non-provisional, the application still needs to lay the foundation for the applicant’s IP rights over the next twenty years and the more detail provided from the beginning, the better.
  • Presuming a provisional application is a patent – provisional patent applications are never examined by the Patent Office and cannot become a patent, so you can’t stop anyone from using your inventions just because you have a provisional on file; however, provisionals can preserve your options until you are ready to file the non-provisional version of the application, which does get examined and can be issued as a patent.

As with many things in the world of patents, a provisional application can be a valuable asset enhancing a company’s competitive position – or a waste of money providing false hope.  Contact us today to find out how we can help you to avoid common patent pitfalls and execute the right patent strategy for your business.

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