A great deal of intellectual property terminology is carelessly tossed around these days with the result that there’s confusion in the public about these terms. Consequently, people wonder about what a trademark is and how it’s different from a copyright. Or, they have serious questions about “provisional patents.”
This last question is especially troubling to legal professionals who work in the realm of intellectual property because there’s no such thing as a “provisional patent.”
However, there is a “provisional patent application,” and it can be a powerful tool for inventors in the U.S. Unlike a regular, non-provisional patent application, a provisional patent application is never examined by the U.S. Patent and Trademark Office. It is never published, and it will never mature into an actual patent.
This may make it sound as if filing a provisional patent application in the U.S. is a waste of time, but that is absolutely untrue. Some inventors have exceptionally good reasons for filing this type of application, and your patent practitioner may recommend that you do so based on the status of your invention.
First to File
In the U.S. and other countries, it doesn’t matter so much who is the first to invent a new product or process. Instead, the real race is to be the first person to file a patent application for the idea. This is because the law states that whoever is the first to file a patent application is the rightful owner of the invention.
If another individual files a patent application for the same invention, then they have virtually no chance of obtaining patent protection because someone else got there first. Accordingly, a provisional patent application is one tool that may be used to ensure that the applicant is the first to file the paperwork.
What Is Contained in a Provisional Patent Application?
A provisional patent application typically is shorter and less formal than a non-provisional patent application. This is because the disclosure will never be reviewed by the U.S. Patent and Trademark Office. Nonetheless, the provisional patent application must contain a clear and concise disclosure that adequately describes the subject matter of the invention.
Unlike a non-provisional patent application, a provisional patent application does not need to have claims. It may include drawings to further illustrate the subject matter of the application.
Why File a Provisional Patent Application?
One of the main reasons to file a provisional patent application is to meet the first-to-file requirement in accordance with U.S. intellectual property law. The first person who files is far more likely to receive any available patent protection than an applicant with a later filing date.
The provisional application lasts for precisely 12 months. During this time, the applicant may make improvements or refinements to their invention. They also may work on formalizing their patent application, such as completing claims that more specifically point out the subject matter that they seek to protect.
Filing a provisional patent application also allows the inventor to say that their creation is patent pending. This can be enormously attractive when seeking funding or partners for the endeavor. Moreover, the filing of a provisional application provides an earlier effective filing date for any non-provisional or foreign application that is filed later.
Is a Provisional Application Right for You?
The best way to find out is by consulting with a qualified patent attorney. They can suggest the best method for seeking patent protection for your invention, and they may recommend performing a search to ensure that patent protection likely is available for your idea. In the long run, this saves you time and money.
At the Law Office of Jeff Williams we help clients navigate through all the intricacies of intellectual property including provisional patent applications.
Author: Jeff Williams
Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.
Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.