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:
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.
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 email@example.com and let us help you with your IP and business matters.
Michael was very helpful over the phone. He took the time to listen to my product and offered as much guidance as possible. I would definitely recommend Michael to anyone who is just starting and looking for some guidance”
Michael is an amazing lawyer. He completed my business’s Provisional Patent and Term and Conditions. Both the PP and T&C were professional and done in a timely manner. Michael has a personable personality ”
I have known Michael Ahmadshahi Since 2003 and he has done a couple of patents for me and other times I have retained him for just legal advice. He is simply the best at what he does. He is knowledgeable ”