• October 2019
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How to Decide Whether to File a Provisional Patent Application

lawtrades choosing to file a patent

If you have invented a new product, process or machine, created a new design for a manufactured product, process or machine or you have made a breakthrough in the evolution of asexually reproducing plant species/hybrids, your creative work may be eligible for formalized legal intellectual property protections under the law. The United States Patent and Trademark Office issues patents for novel inventions matching these descriptions, provided that these innovations do not infringe upon the rights of other legally protected creative work. However, it is important to understand from the start that the patent application process is notoriously time-intensive, labor-intensive and strictly scrutinized. It is partially for these reasons that it is important to consult with an experienced intellectual property attorney as soon as you have invented something new. The complexities of the patent application process tend to necessitate the guidance of an attorney experienced in this highly-specialized area of law.

In addition to being complex, the patent application process is uniquely time sensitive. This is another reason why it is important to consult with an attorney as soon as you or your business has invented something new. The longer you wait to begin the patent application process, the longer that both you and your invention will remain legally vulnerable in consequential ways. In addition, if you wait too long after creating an eligible invention to file for patent protection, so-called “prior art” claims emerging over time could render your application ineligible for USPTO approval. One of the tools that your attorney may recommend that will help to “buy you some time” while you work together to complete your formal non-provisional patent application is submission of a provisional patent application. There are significant benefits associated with the provisional patent application process. However, it is important to note from the start that there are some limitations associated with this legal tool as well.


Benefits of the Provisional Patent Application Process

The only way to have an invention formally protected by patent safeguards involves the submission of a non-provisional patent application to the USPTO. One of the primary challenges associated with the submission of non-provisional patent applications is that they take a great deal of time to complete. The time-intensive nature of the process is not an insurmountable challenge in and of itself, especially if an inventor retains the services of an experienced intellectual property attorney who can help to ensure that completion of the application is not subjected to any unnecessary delays. However, the USPTO judges the novelty of an applicant’s invention against the date that a non-provisional patent application is formally submitted to the agency. Every day that goes by as an attorney works to complete that application, sources of prior art may emerge in the marketplace. As a result, the very time it takes to complete a non-provisional patent application may endanger its chances of being successfully approved.

The reason why a provisional patent application is so valuable is that it allows an inventor to benefit from a favorable filing date while that individual’s non-provisional patent application is being prepared. Filing a provisional patent application does not result in patent protections. Its benefits are derived from the fact that if a non-provisional patent application is submitted within one year of a corresponding provisional patent application, the invention in question will be judged against the date that the provisional patent application was filed, not the later date that the non-provisional patent application was filed. Taking the step of submitting a provisional application can help to protect the novelty of an invention as its creator gathers support and researches existing patents for the purpose of filing a formal request for patent protection in the form of a non-provisional application.

This “extra time” that an inventor gains by submitting a provisional patent application can be especially helpful when a non-provisional patent application is particularly complex and/or when an invention needs to be modified due to the results of a patent search. By gaining time to finish preparing a final petition without risking exposure to newly emerging sources of prior art, an inventor may be granted freedom to “tweak” the invention in question if a patent search determines that its fundamental nature too closely mirrors inventions that have received legal protections in the past. In addition, inventors will oftentimes submit provisional patent applications before their inventions are complete in order to insulate their work from prior art, provided that the invention is close enough to completion that a non-provisional patent application may still be submitted within the one-year time limit for a corresponding provisional patent application. Most of the time, there is really no reason not to consider submitting a provisional patent application.


Limitations of the Provisional Patent Application Process

With that said, there are some limitations to the provisional process that inventors should keep in mind. First, the USPTO only accepts provisional patent applications for utility patents and plant patents. If you are seeking a design patent, you will not be able to take advantage of this process. Second, there is no way to extend the one-year deadline imposed upon the second-half of this process. If your non-provisional patent application will not be ready within one year of your provisional application submission, please consider holding off on filing your provisional patent application. Once you and your attorney are confident that your work is complete enough and your non-provisional patent application is far enough along that you can confidently meet the one-year deadline for corresponding submissions, then you can speak with your attorney about filing a provisional patent application.


Intellectual Property Assistance Is Available

If you are interested in seeking patent protections for an eligible invention, please do not wait to contact an attorney. Innovative American businesses and individual inventors turn out novel creations at a startling rate. The longer you wait to seek legal guidance regarding your intellectual property rights, the more you risk claims of prior art, legal vulnerability and potential liability. It is true that the patent application process is notoriously difficult to navigate. But a seasoned intellectual property attorney will be able to help you manage this process efficiently and effectively. Each LawTrades attorney on our marketplace has extensive experience in highly-specialized area of law. When you schedule a consultation with one of our intellectual property attorneys, we will be happy to answer any questions you have about whether filing a provisional patent application would be beneficial in regards to your unique invention.