When To File For A Patent — Part 2:

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So, as we discussed last week, ideas aren’t patentable.  But, can the USPTO offer any assistance to inventors that are perhaps a bit farther along, but aren’t quite ready for a patent?  Full-blown patent protection is not available until the patent issues; however, if an inventor files a provisional patent application, the USPTO will give the future actual patent the filing date of the provisional patent application.

This earlier filing date may be extremely important; in the United States, patents are no longer granted to the ‘first to invent’. Since the America Invents Act took effect earlier this year, the USPTO now grants patents on a ‘first to file’ basis. When a contest to be the first heats up, an earlier filing date preserves your priority as the initial inventor who is entitled to patent protection.

A provisional application has other benefits, including allowing inventors to mark their inventions with “Patent Pending.” Other benefits are discussed below.

While a provisional application typically includes a description and/or drawing of the invention, it does not require any claims, oaths, or disclosures of the prior art like an actual patent application.

Some warnings: a provisional patent application is not a patent; it actually is never examined by the USPTO. Therefore, to be granted a real, protection-providing patent, the inventor must file an actual patent application within one year of the provisional application or risk patent forfeiture.

This shows how powerful provisional patent applications—which may be used to obtain earlier filing dates on patents that issue—can be. Once you file a provisional application, you have reserved your filing date. And as long as your actual patent application is filed within a year of your provisional patent application (and everything else goes smoothly), you will be entitled to keep that earlier filing date of the provisional application.

For further discussion on when to file your patent, stay tuned for PART 3: “Is It Too Late To File?”

Topics:  Patent Applications, Patent-Eligible Subject Matter, Patents, Provisional Applications, USPTO

Published In: Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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