* Provisional Patents

Provisional Patent Applications

Provisional patent applications are helpful for deferring costs, but filing a provisional now then filing a nonprovisional in a year ends up costing more than simply filing a nonprovisional now.

Patents are designed to disclose the invention so that someone skilled in the art can make and use the invention. At the same time, the applicant is given the opportunity to describe other embodiments of the invention and to explain how the invention differs from the prior art. While it is true that a provisional application need not include all of the formalities of a nonprovisional application, a nonprovisional application that claims the benefit of a provisional’s earlier filing date can only do so to the extent that the provisional discloses and supports the as-claimed invention. As such, strong provisionals are written to look and feel exactly like nonprovisional applications so that the only thing a patent practitioner needs to add are the claims. You can still file a nonprovisional application that claims priority to any provisional application (whether weak or strong), but with a weak provisional as the foundation there will likely have to be lots of new matter added to the nonprovisional application. If the new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.

We occasionally get asked to “just file something” with the USPTO. We don’t do this. For the same reason a doctor doesn’t “just send your prescription to the pharmacy.” For the same reason a CPA doesn’t “just file your taxes with the IRS.” We don’t “just file it with the USPTO.” Because if our name is on any filing, then the filing must meet our standards. Just like a house needs a firm foundation, a company needs a strong intellectual property plan. Don’t build your company on sand. Don’t “just file it.”

Provisional applications are best for products (such as software) that are still evolving over the first year. In this case, it makes sense to file multiple provisional patent applications over the first year and then roll all of them up into one nonprovisional application.

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