Intellectual Property Law Blog

When Is a Provisional Patent Application a Good Strategy?

November 25th, 2015

By Martin G. Belisario, Esq.When-Is-a-Provisional-Patent-Application-a-Good-Strategy

Invention is not always a linear or straightforward process. It’s often messy and organic, with lots of trial and error. And while the inventor is focused on inventing, protecting any associated intellectual property rights may not be their top priority. The Philadelphia patent lawyers at Panitch Schwarze have seen time and again that a legitimate invention may exist well before it is ready to be finalized for commercial production.

Fortunately, the U.S. patent system affords a way essentially to “hold a place in line” for an invention that still requires additional refinement: a provisional patent application. Knowing when and how to make best use of a provisional application is an important part of any company’s IP strategy.

Provisional patent applications have been around since 1995, but the United States’ switch from a first-to-invent to a first-to-file system in 2013 has heightened their importance. In the wake of the America Invents Act (AIA), being the first applicant to the PTO with a claim on an invention is crucial to securing IP protection for that invention, whether it be a pharmaceutical compound, a medical device, or a component of a smartphone. The provisional patent application helps innovation-driven companies file patent applications at the early stage of the development process.

The filing of a provisional patent application starts a 12-month clock, by the end of which time the inventor must file a complete, non-provisional application. That full patent application then inherits the filing date of the provisional application that preceded it. (However, the 20-year term of patent protection is based upon the filing date of the full application, not that of the provisional application.)

When the USPTO receives a provisional application, it acknowledges and files it, but does not substantially examine or review its contents. One advantage this provides to an inventor is that there is no need to conduct a thorough prior art search before submitting a provisional application, thereby saving a considerable amount of time and effort.

Provisional applications should not be treated as mere placeholders, however. A hastily or imprecisely drafted provisional application may not hurt you during the USPTO’s examination of the later, completed patent application, but it could give a competitor an opening to claim, at some future date, that the invention does not constitute prior art to their own — or, worse, that their invention preceded yours or even invalidates your patent.

Because a provisional application does not need to include claims, the chief vulnerability to a later attack by a third party is likely to lie within the disclosure of the invention. The claims of the non-provisional application must be fully supported in the provisional to receive the provisional application filing date. Regardless, it is required to describe the invention thoroughly and precisely enough to comply with Section 112 of U.S. patent law, which covers the invention’s specifications. To the extent possible, the disclosure of the invention on the provisional application should match that which eventually will appear on the full patent application. Third parties with good intellectual property counsel certainly will be looking for any differences between the two as a basis upon which to locate intervening prior art to invalidate the patent and gain a competitive advantage for their own inventions.

The Philadelphia patent attorneys of Panitch Schwarze have decades of experience in helping inventors and businesses of all types protect their valuable intellectual property. If you have an invention that you think might benefit from the filing of a provisional patent application, call us at 888-291-5676.

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