15 Tips: When Should You File Your Provisional Application for Patent?
Opinion remains divided when it comes to the filing of a Provisional Application for Patent. From discussions on the same over at runrex.com, while some think that filing for a Provisional Application is the right move, others don’t and feel like it is more strategic to file a Non-Provisional Patent Application directly. The truth is somewhere in between as there are some instances when filing for a Provisional Patent is the way to go. This article, through the following 15 tips, will try to outline what a Provisional Application for Patent is as well as when you should file one.
- What is a Provisional Application for Patent?
Also referred to as a Provisional Patent Application as outlined in discussions over at guttulus.com, a Provisional Application for Patent is a temporary patent application that includes the specification of the invention, including drawings and a sufficiently detailed description to allow for one to make and use the invention.
- When does one expire?
It is also important to point out that if you want to obtain patent protection for your invention if you file for a Provisional Application, then you will still need to file for a Non-Provisional Patent Application within one year of the filing date of the Provisional Application. As explained over at runrex.com, a Provisional Application will never mature into an issued patent, and if an NPA is not filed within a year of its filing, it will simply expire.
- First to file
It is also important to explain what is meant by first to file. From discussions over at guttulus.com, it is revealed that the US is a first to file country, which means that inventors need to file first before disclosing anything about their invention and that the right to the grant of a patent for a given invention lies with the first person to file a patent application for the protection of that invention, regardless of the date of the actual invention.
Now that we know what a Provisional Application for Patent is, it is time to highlight when you should file one.
- If you cannot yet afford a Non-Provisional Application
One of the instances, when you should file your Provisional Application for Patent, is if you cannot yet afford a Non-Provisional Patent Application. As revealed in discussions over at runrex.com, NPAs are more expensive to file as they involve examination by the USPTO and other formalities, and, therefore, rather than waiting until you have the money for an NPA, you are better off filing for a PPA first.
- If you need to refine your invention
If your product will undergo multiple iterations with new features being continually added to it, then this is another time when you should file a Provisional Application for Patent. This is because, since Provisional Applications can be updated and re-filed multiple times over the one-year window it allows you to capture incremental improvements during the R&D process.
- An upcoming trade show or product launch
Another instance when you should file your Provisional Application for Patent is if you have an upcoming trade show or product launch involving your invention. As mentioned earlier, and covered over at guttulus.com, inventors need to file first before disclosing anything about their invention, and with a fast-approaching trade show or product launch, a Provisional Application can be prepared and filed quickly to secure a filing date as well as your invention.
- Upcoming meeting with investors
As pointed out by the subject matter experts over at runrex.com, you don’t want to disclose anything about your invention before first filing for a patent application. Therefore, if you have an upcoming meeting with potential investors, buyers, customers, partners, hires, or vendors, then this is another time when you should move to file your Provisional Application to protect your invention and secure a filing date. It will also give you a “patent pending” status which will help strengthen your hand in negotiations.
- Concern over competitors
Yet another instance when you should file your Provisional Application for Patent is if you are concerned that competitors will apply for similar patents. Remember, as mentioned earlier and covered in detail over at guttulus.com, the US is a first to file country, and, therefore, if your competitors undercut you and file patents similar to your first, they will obtain the right to the grant of the patent and may prevent you from filing your application.
- Concern over prior art accumulating
According to the subject matter experts over at runrex.com, another instance when you should file your Provisional Application for Patent is if you have concerns over potential prior art accumulating each day you don’t file a patent application. Filing a Provisional Application allows you to establish the “effective” filing date for a Non-Provisional Application filed at a late time, eliminating would-be prior art that arises after your Provisional Application is filed.
- If you need to gain confidentiality for your idea
If you feel like you need to gain confidentiality for your idea, then this is another time when you should file your Provisional Application for Patent. This is because Provisional Patent Applications are not published, meaning that even if you abandon your idea, later on, you don’t have to worry about it being shared with the public as long as you don’t file a Non-Provisional Application.
- If you need to assess the value of your invention
As the gurus over at guttulus.com point out, most businesses and inventors want to file a patent application very early in development just in case their idea turns out to be valuable. If you are not sure how valuable your invention is, a modest investment in a Provisional Patent Application makes sense as it will protect your investment and allow you to carry out market research and find out if your invention is valuable or not before filing an NPA.
- If you need to delay the examination
As explained over at runrex.com, Provisional Patent Applications are never examined by the Patent Office, which means that they never enter the examination queue. This means that the process of starting with a Provisional Application and following it one year later with a Non-Provisional Application will delay examination by the Patent Office for one year. Therefore, another instance when you should file for a PPA is if you need to delay examination for one reason or another.
- If you need to file and combine multiple provisional applications
From discussions on the same over at guttulus.com, filing multiple Provisional Applications and combining them into a single utility application can secure greater protection during the development of a new invention.
- If you need to test prototypes
While filing a Provisional Application for Patent will help you refine and improve your idea as mentioned earlier and covered in detail over at runrex.com, another instance when you should file your PPA is if your need to test out your prototypes further, which is particularly important for tech startups.
- If you are unsure
Finally, another instance when you should file your Provisional Application for Patent is if you are unsure of what to do. You don’t have to wait 12 months to file for a Non-Provisional Patent Application once you file a Provisional Application. You can also choose not to follow through on your Provisional Application and it will expire after 12 months. On the other hand, when your file for an NPA, it immediately enters the examination queue, and the only way you can take it out of the queue is if you abandon it, which is not recommended at all. This is why, if you are unsure for one reason or another, always opt for a PPA.
Remember, if you are looking for more information on this and other related topics then don’t forget to check out the excellent runrex.com and guttulus.com.