Should We File a Provisional Patent Application Before Marketing a New Product?

  1. Major features of provisional patent applications and the differences with non-provisional patent applications.

To briefly introduce the background, provisional patent filing was offered by the USPTO in 1995 to provide U.S. inventors a low-cost, simpler option that established parity between U.S. filers and those foreign filers who were able to benefit from their foreign filing priority dates with no negative effect on the U.S. patent term that was 20 years from the effective U.S. non-provisional filing date. Unlike a non-provisional patent application, a provisional patent application does not issue as a patent but does give the right to the inventor to file a subsequent non-provisional patent application that claims priority to the provisional patent application. Further differences and considerations compared to a non-provisional patent application are discussed below:

    1. One-year patent pending status: A provisional patent application gives you a “patent pending” status for one year from its filing date and it becomes abandoned after one year unless you file for a non-provisional patent application and claim priority to the corresponding provisional patent application.
    2. No right to exclude others from making or using your invention: Technically, a provisional patent application is not like an issued patent and does not give you the right to exclude others from making or using your invention other than a “patent pending status.” 
    3. No publication, no public disclosure: Unlike non-provisional patent applications, provisional patent applications are not published and thus are not publicly disclosed.
    4. No claims, oath, or declaration are required (easier to file): Provisional patent applications require fewer formalities and less drafting. For instance, you don’t need to draft claims with your provisional patent application, and only a brief description and necessary drawings would suffice.
    5. Low-cost: Provisional patent applications are substantially less costly than non-provisional patent applications in terms of government filing fees as well as attorneys’ fees.
    6. No examination: A provisional patent application is not examined by USPTO examiners and after proper filing with the USPTO, they will be kept confidential, unless the corresponding non-provisional patent application is filed and published.
    7. No effect on the patent term: Although in a non-provisional patent application, an inventor may claim priority to the filing date of the corresponding provisional patent application, this will not affect the 20-year patent term that starts from the filing date of the non-provisional patent application.
    8. The importance of the scope of the disclosure: In drafting a provisional patent application, the scope of the disclosure and drawings play a substantial role at the time of its conversion to a non-provisional patent application because the corresponding non-provisional application cannot expand or claim more than what was described in the original provisional patent application.
  1. Advantages of filing a provisional patent application before marketing a new product.

Beginning with the passage of the America Invents Acts of 2011, the United States has changed its patent system from the old first-to-invent to the new first-inventor-to-file system. This significant change in the patent law requires that inventors be the first to file to secure their patent rights.

The primary goal in filing a provisional patent application is its filing date. It establishes the date beyond which a reference cannot be used as prior art against patentability of the invention. Another incentive of filing a provisional patent application is its low filing fees as well as low attorneys’ fees.

Filing a provisional patent application will also provide the business owner a “patent pending” status on their product. This provides a competitive advantage to inventors and business owners who may want to market their inventive product before obtaining a patent. It further discourages competitors from making and distributing similar products that may infringe on the patent that may issue in the near future. 

Marketing a new product may involve several steps that may lead to public disclosure of the invention. For instance, marketing or advertising a new product, may inform the public and competitors about the key features of the product or the original invention. Filing a provisional application will make it difficult for the infringer to design around the invention at least until the corresponding non-provisional patent application is published. It also protects the inventor from a later inventor who has independently invented the same product by virtue of the filing date of the provisional patent application. 

Inventors may also rely on their provisional patent applications to disclose their invention to third parties such as suppliers, vendors, or even potential investors, without fear of loss of their patent rights. Additionally, some investors would like to see the inventor’s competitive advantage in the market through the filing of the provisional patent application. To this end, by utilizing low-cost provisional patent applications as opposed to costly non-provisional applications, inventors can secure their patent rights for a period of one year while disclosing their invention to other in the course of commercialization of their invention. 

  1. Conclusion

In summary, considering all the benefits of a provisional patent application, inventors should consider filing one before marketing their new and inventive product. If you need help regarding a provisional patent application or other intellectual property matters, contact Ahmadshahi Law Offices today and get an initial consultation. Michael M. Ahmadshahi concentrates its practice on patents, trademarks, copyrights, trade secrets and other intellectual property and business law. Call us toll free at (800) 747-6081 or direct at (949) 556-880 or email mahmadshahi@mmaiplaw.com and let us help you with your IP and business matters.

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