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Do I Need a Lawyer to File a Provisional Patent Application?

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The process of inventing something new doesn’t end when an innovator’s vision is realized. When an invention is complete and reproducible, the creative phase of the innovation process makes way for the legal phase. By legally safeguarding intellectual property, inventors can better ensure that their work won’t be infringed upon. Similarly, securing patent protection for inventions shields innovators from accusations that they are benefitting from intellectual property that belongs to another party.

In general, the process of legally safeguarding a unique product, process, machine, or design of a manufactured work involves securing a patent. The United States Patent and Trademark Office accepts both provisional patent applications and non-provisional patent applications as part of this process. Most inventors benefit from the assistance of intellectual property attorneys while completing their provisional patent applications. 


Patents and Patent Pending – The Basics

The USPTO issues patents for three kinds of inventions. The most commonly issued patents are utility patents. Utility patents safeguard manufactured products, manufacturing processes, and machines. By contrast, design patents protect the ornamental features of something that could be protected under a utility patent. Finally, plant patents extend to unique species or hybrids of asexually reproducing plants.

To secure a patent, an inventor must submit a non-provisional patent application and have that application approved. However, an inventor may secure “patent pending” status after submitting a non-provisional patent application or a provisional patent application. Once an invention is classified as patent pending, this phrasing may be used in in reference to the invention being used, marketed, etc. Inventors can benefit from filing a provisional patent application on their own in the year before they submit a non-provisional patent application to the USPTO. This step allows inventors to both secure patent pending status and a favorable filing date for their non-provisional patent application.


Provisional Patent Applications vs. Non-Provisional Patent Applications

The only way that an inventor can seek formal patent protection is by submitting a non-provisional patent application to the USPTO. Provisional patent applications don’t allow inventors to seek intellectual property protection. The sole purpose of provisional patent applications is to secure favorable filing dates for non-provisional patent applications. Essentially, a provisional patent application that is approved allows a non-provisional patent application to benefit from its filing date, if it’s filed within a year of the provisional submission.

There are two reasons why favorable non-provisional application filing dates are important.

First, the USPTO decides whether an invention is unique or not based on its non-provisional filing date. For example, say that “Inventor A” submits a non-provisional patent application on February 1. Inventor A did not submit a provisional patent application, so their non-provisional application filing date is February 1. On January 20, “Inventor B” requested legal protection for the same invention through either a provisional or non-provisional patent application. Because “Inventor B” is benefitting from an earlier filing date, the patent is extended to Inventor B. Had Inventor A submitted a provisional patent application before January 20 in anticipation of filing a non-provisional patent application within the year, the patent would have gone to Inventor A.

The second reason why favorable non-provisional filing dates are important is that they will influence the outcome of future intellectual property lawsuits. If you sue an infringer or are accused of infringement, your filing date determines who is in the right.


Can I File a Provisional Patent Application on My Own?

The process of completing a provisional patent application is far more straightforward than the process of completing a non-provisional patent application. You can save some money on attorneys’ fees by filling out and submitting your provisional patent application yourself. However, you may want to ask yourself one fundamental question before digging into this process without legal guidance. Is it a good idea for you to conduct a patent search before you submit your provisional patent application? Most of the time, it’s okay to wait to conduct a thorough search of existing patents until you’re preparing your non-provisional patent application.

Attorneys have access to sophisticated software and platforms that make such searches easier to conduct and more comprehensive overall. An attorney also generally knows what to look for during such searches and can break down results more efficiently and effectively than lay people. There are times when it makes sense to conduct this kind of search before a provisional patent application is filed. Your provisional patent application’s favorable filing date won’t transfer to your non-provisional patent application if the inventions are truly dissimilar. Are you concerned that you may have to fundamentally change elements of your invention if your patent search proves the existence of prior art? If so, you may want to speak with an attorney about your patent search needs before you submit a provisional patent application.


Filing a Provisional Patent Application Without Legal Help

Provisional patent applications are usually fewer than 10 pages in length. They primarily ask inventors about how their innovations are made and how they are used. When explaining your invention, you’ll likely need to use both words and drawings. If you’re filing a utility patent, you’ll need to explain why your invention is both unique and useful. You’ll also need to enclose a modest filing fee as detailed on the USPTO website.

Remember – Don’t file until you’re within a year of the date you’ll be filing your non-provisional patent application. If you wait more than a year to file your non-provisional patent application, your favorable filing date will be voided. Finally, if you conduct a patent search on your own before filing your provisional patent application, prepare to spend at least 100 hours on this task. You’ll need to navigate technical language and search for prior art that could affect every fundamental element of your invention.


Intellectual Property Assistance Is Available

If you or your business recently invented something new, it’s important to legally protect your innovation. Consider exploring your options by scheduling a consultation with an intellectual property attorney at LawTrades today. The experienced team at LawTrades is dedicated to helping innovators safeguard and protect their intellectual property rights. Whether you’d like help completing a provisional patent application, non-provisional patent application, or conducting a patent search, we can help. We look forward to hearing more about your invention and your intellectual property needs. 



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