Patent infringement is a costly problem for inventors and businesses, and by the time the problem is discovered, it can be very costly to litigate and solve for all parties involved. However, there is a way to ensure that inventors can stake their claim as the first person to create an invention. A provisional patent doesn’t require the same painstaking work as a non-provisional utility patent, but does protect the creator’s rights as the inventor.
What’s a provisional patent for? How is different from a design or utility patent?
A provisional application for patent (provisional application) despite its name is not a a patent. It is a disclosure that is filed with the United States Patent and Trademark Office (USPTO), but it is not examined. It acts a place holder or a save the date to claim as a priority date for your later filed non-provisional application.. This is especially useful in very competitive fields where even the best-kept secrets can sometimes be leaked to the competition. Thus, filing a provisional application helps to ensure that the inventor who first came up with the invention isn’t beaten to the finish line.
Provisional application can also help inventors who need to generate investor capital in order to finance the actual non-provisional patent application. With a provisional application, they can have some assurance that their marketing efforts won’t make them vulnerable to having his or her idea taken.
A provisional application must disclose an invention the inventor has thought out enough that the inventor can teach another in the field how to practice the invention. For example, a provisional application for a rocket ship to the Sun won’t be granted if the application doesn’t explain how it will actually get to the Sun. Similar to a non-provisional application, you cannot protect an idea, only an invention.
If I file a provisional application, do I still need to obtain a design or utility patent?
Yes. You have 12 months after submitting an application for a provisional patent to submit your utility patent. Generally, a design patent cannot claim priority to a provisional application.
Do I have to file a provisional application?
You don’t have to do it. There may be no point to doing it if your research, funding, and design is completed. A provisional patent gives an inventor an additional 12 months to perfect their idea before formally submitting a non-provisional application to the USPTO. However, if your invention needs no more perfecting, then it would be more expedient to directly file your design or utility patent instead.
What happens if my non-provisional application for patent is rejected? Do I still have the provisional patent?
No. A provisional application is like a placeholder for the design or utility patent. It doesn’t go through the same scrutiny as a design or utility patent. Thus, if the USPTO rejects your design or utility patent, your provisional patent would not stand. There still may be a way to capture the priority date of the provisional by filing of a continuation or a continuation in part application.
Should I speak to a patent attorney before filing a provisional patent?
Yes. A patent attorney can save you a lot of time and money. A provisional application done incorrectly provides no protection and is worth less than the filing fee you will pay. Patent attorneys take and pass both a state bar exam and a federal patent bar exam. They don’t just know patent law; they know inventions. Our patent attorneys can help you determine if filing a provisional application is in your best interest, and if so, we can help you file your application correctly. For assistance getting started, contact our patent and intellectual property attorneys at 888-666-0062.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
Law Office of Jason H. Rosenblum, PLLC © 2018 All rights reserved.