Provisional Patent Applications

You have a great idea: a new business model, a new product, or an improvement on some existing process.  You want to tell the world – or at least some prospective investors. You want to get your new business up and running as fast as possible.  That usually means talking to potential customers and maybe even launching a website.  But how can you protect the idea from being copied?  Ask most people and they’ll tell you to “Patent it!!”

That’s easier said than done.  Simply put, patents take a long time to issue (although there are some shortcuts), they are expensive to acquire, and they require using a patent lawyer.  How then does a start-up company operating on a shoestring budget protect its valuable intellectual property without losing focus on what is really important – building a better mousetrap?

Since 1995, inventors have had the option of filing a “provisional” application.  Unlike a full utility application, provisionals do not require claims, nor do they need to follow any particular format.  Provisionals are not examined, do not become public (unless a subsequent utility application is published), and do not grant the applicant any enforcement rights.  Filing a provisional application essentially puts a stake in the ground, securing its filing date as the priority date for later-filed applications.  Within a year of the provisional filing, you then must file a complete utility application, which will be examined and, hopefully, mature into an issued patent.

With the transformation of the United States into a first-to-file jurisdiction, provisionals have become even more important, as patent applicants race to be first to the Patent Office.  It remains critical, however, that provisionals include enough disclosure to adequately “teach” others how to practice the invention – a goal that is achieved by working closely with a patent attorney.  For certain technologies, such as life science and pharmaceuticals, provisionals may need significantly more disclosure compared to other technology areas to ensure that possible patent protection is maximized.  As an aid, check out this invention disclosure document, which can be used by the inventor to help prepare for a meeting with an experienced patent attorney.

This post on Patents, and Intellectual Property was authored by Founders Workbench.

= required field