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Who Should File a Provisional Patent Application?

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The process of inventing a new product, process or design is rarely straightforward. Sometimes, a spark of inspiration leads to the creation of something novel within the span of a few days or weeks. Sometimes, it takes months or years to develop a unique piece of creative work. Once a new product is complete, it can be tempting to sit back, relax and enjoy the feeling of accomplishment that accompanies a job well done. However, the process of inventing something new does not end with the creative phase of innovation. Only when one’s work is properly legally protected does it make sense to breathe easily.

Without proper legal protection, new inventions remain vulnerable to infringement. Similarly, until an invention has been legally safeguarded, using it publicly or seeking to profit off it may leave an inventor vulnerable to infringement claims filed by others. For better and for worse, the process of obtaining a formal patent for new products, processes, designs and plant species helps to ensure that patent holders retain rights and protections related to their inventions that are enforceable under the law.

Obtaining a patent is a notoriously complex, detailed and time-intensive process. It has often been observed that of all the intellectual property safeguards issued by the United States government, patents are the most difficult to apply for successfully. It is for this reason that both individual inventors and innovative businesses tend to significantly benefit from consulting experienced intellectual property attorneys when seeking to obtain formal patents. Lawyers who specialize in intellectual property matters are well placed to assist inventors with the complex application process.

Depending on the type of patent one is applying for and the timeline associated with the filing of a specific application, an attorney may or may not advise an applicant to consider filing a provisional patent application before filing a non-provisional patent application.

 

Provisional Patent Application Eligibility: Types of Intellectual Property

Only certain kinds of creative work are eligible for patent protection. Original works of art and authorship, including visual art pieces, musical compositions, certain written works and architecture are protected via copyright. Words and images designed to distinguish a company’s brand and products from its competitors are safeguarded by trademarks. And trade secrets that help businesses to maintain their competitive edge are generally protected through the use of non-disclosure agreements. Only unique and non-obvious products, processes, plant species and designs of manufactured products and processes are legally shielded by patents.

The United States Patent and Trademark Office reviews patent applications and ultimately approves or rejects them. In order to formally apply for patent protections, inventors and their attorneys must submit completed non-provisional patent applications. Non-provisional patent applications serve as formal requests for the USPTO to issue individual inventors and businesses patent protections.

The USPTO also accepts provisional patent applications on behalf of inventors and businesses interested in protecting their work via utility patents or plant patents. The third kind of patent available, a design patent, is not eligible for provisional patent application review. As more than 90 percent of all patents issued in the U.S. are utility or plant patents, most applicants will benefit from considering the provisional patent application process.

 

What Exactly Is a Provisional Patent Application?

When an applicant submits a non-provisional application for review, the USPTO assigns that application a filing date. This filing date is critically important for a few distinct reasons. First, it is the date against which the USPTO will judge all works of prior art. When the agency is evaluating the novelty of a product, process, design or plant species, it strictly scrutinizes any similar works that have been patented in the past. If an applicant’s invention fundamentally mirrors another patented work, it will not be considered eligible for new protections. As a result, it is essential to secure a filing date with the USPTO as soon as is both practical and possible. The longer an inventor waits to secure a filing date, the more likely it is that prior art will affect the applicant’s ability to secure proper legal safeguards. Second, the filing date helps to establish when a given invention is granted federal protection for the purposes of future infringement claims. If a work is successfully patented, any infringement claims related to that work will be judged against its non-provisional filing date.

Securing a favorable non-provisional filing date is therefore critically important for several reasons. But it takes inventors time to successfully compile their non-provisional applications. Working with an attorney helps to ensure that these applications are accurate, properly supported and completed without unnecessary delays. But because non-provisional applications are so complex, they do take time to properly complete. As a result, the USPTO offers provisional patent applications for those inventors seeking utility and plant patents. When these applications are processed, they secure a favorable filing date for any corresponding non-provisional patent application submitted within one year of the provisional petition. Although the provisional patent application does not legally protect an invention in any way per se, it does help to ensure that an inventor’s work is protected from newly emerging prior art during the period of time that the inventor and his or her attorney are working to complete a non-provisional application.

 

Who May Benefit from Filing a Provisional Patent Application

Anyone interested in obtaining a utility patent or a plant patent should speak with their attorney about the pros and cons of filing a provisional patent application. In most situations, it tends to make sense to take this additional proactive step. Yes, there is slightly more paperwork involved in filing both provisional and non-provisional patent applications. However, securing a favorable filing date while gaining up to a full year of time to finish one’s non-provisional patent application is a significant benefit of this USPTO process.

One of the most pressing reasons to consider filing a provisional patent application involves the complexity of patent searches. If you ultimately choose to file a non-provisional patent application, your attorney will take time to complete a search of existing patents. Because the USPTO only approves patents for creative work that is not fundamentally similar to previously protected work, it is critical to ensure that your work will not be rejected for mirroring another’s intellectual property. The patent search process is intense and extensive. If your attorney discovers that your work is likely to be rejected for being too similar to other work, you can tweak your product, process, design or plant until it again becomes eligible for protection. Submitting a provisional patent application will allow you time to make these tweaks while ensuring that your favorable filing date protects you from emerging forms of prior art.

It is also important to note that 18 months after non-provisional patent applications have been submitted to the USPTO, their contents generally become part of the public record. If an inventor is not yet ready to disclose details about his or her work and wants some extra time before submitting a formal non-provisional application that will soon become a part of the public record, a provisional patent application can provide that extra time-related buffer.

And because patent application information only becomes part of the public record 18 months after it has been submitted to the USPTO, your attorney may feel that your work will benefit from a clearance search. While a patent search helps to ensure that your non-provisional patent application will be approved by the USPTO, a clearance search helps to ensure that you will not be sued for infringing upon someone else’s intellectual property down the road. These searches are nuanced and complex, so it is important to speak with your attorney about whether you need to take this additional step. But if you do, securing a favorable filing date via a provisional patent application may help guarantee that your attorney has enough time to take this potentially important step on your behalf.

 

Intellectual Property Guidance Is Available

Every inventor approaches the creative process differently. As a result, there is no “one size fits all” approach to the process of patenting a new invention. Some individuals and businesses are eager to file non-provisional patent applications as soon as their creations are both complete and eligible for protection. Others prefer to take a little extra time finishing their work and preparing their non-provisional applications. The attorneys at LawTrades are highly experienced in matters involving intellectual property protections and can help you regardless of which approach will ultimately work best for you and your innovation(s).