Why to File a Provisional Patent Application?

By Patent Attorney, Patents

In the past, before the Leahy-Smith America Invents Act (signed into law on September 16, 2011), an inventor could attempt to reserve the rights for his or her invention without filing a patent application, whether it be a provisional or nonprovisional patent application.  For example, an inventor may have described the invention in a dated journal, told a friend in confidentiality, or may have described the invention on paper and then mailed that disclosure to his or her self without opening said mail.  These methods may have work because before March 16, 2013, the U.S. patent system was based on the “first inventor to invent.”   Said another way, in a dispute between two inventors over the same or substantially similar invention, the first inventor to actually invent the invention generally had superior rights to it.  After March 16, 2013, however, the U.S. patent system changed to a “first inventor to file” system.  Said another way, now in a dispute between two inventors over the same or substantially similar invention, the first inventor to have filed for the invention generally has superior rights to it.

Specifically, Section 3 of the Leahy-Smith America Invents Act provided that the U.S. was transitioning from the First to Invent patent system to a system where priority is given to the first inventor to file a patent application.  Again, this transition went into effect on March 16, 2013.  Therefore, gone are the days when an inventor can protect his or her rights to a particular invention in the U.S. without filing a patent application.  Therein lies the importance of filing a provisional (or other) patent application.

A provisional patent application is a fairly low cost alternative to filing the full nonprovisional or international patent application, ranging in price from $800-2500.  Some people think of a provisional patent application as a “placeholder” or “temporary” application, as it stops the clock to any statutory bars, reserves your rights to the invention disclosed therein, and gives the inventor one year from the provisional patent application filing date to file the full nonprovisional or international patent application.  Plus, as many inventors find important, after a provisional patent application is filed, you can say you are “patent pending.”

Again, keep in mind the provisional patent application is temporary, so an inventor should always be keeping in mind the end goal, which is to file a nonprovisional patent application and get a patent issued.  That said, having a properly document and adequately disclosed provisional patent application can allow the inventor to present or display his or her invention publicly without dread of losing patent rights.  Said differently, an inadequately described provisional patent application without the needed invention disclosure offers basically no advantage at all, and can be accompanied by significant drawbacks later.

Another key advantage of filing a provisional patent application is that the United States Patent and Trademark Office (“USPTO”) will not do anything with the patent application unless and until you document a nonprovisional patent application asserting the advantage of the need of the patent application filing date.  Again, you should file a nonprovisional patent application within 12 months of the filing date of your provisional patent application, keeping in mind the end goal to assert the advantage of that provisional patent application filing date.  When you do file the nonprovisional or international patent application inside 12 months from the provisional filing date, the nonprovisional or international patent application will be given the “effective” filing date of provisional patent application.

So it is best to think about the provisional patent application as a lower-cost method for beginning your excursion toward getting an issued patent, and make sure when a provisional patent application is filed, it should be filed with as much details as possible, including all sketches or drawings associated therewith.  This is where product development could be helpful as well.  As a general rule, a provisional patent application will be adequate if the disclosure therein will provide a person of skill in the art (e.g., a mechanical engineer dealing a thermodynamic cycle) enough information how to make and utilize the invention without undue experimentation.

Should you have any questions or need any help with drafting or filing a provisional, nonprovisional, or international patent application, we at The IP Law Firm, an intellectual property law firm having offices in Fort Lauderdale, Plantation, and Tampa, wish you much success and are here to help.

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