My company has several new product concepts under development right now, and some are very early in the design process. We are in a very competitive space, so we want to protect our work with patents to the extent we can. Typically, we file provisional applications early and follow up with a non-provisional within 12 months. But, I’m not sure what we can really cover right now because a lot is likely to change between now and product launch. Is there a downside to filing a provisional application now?
Dear Still Inventing,
Great question. Every situation is different, but it is generally good practice to file provisional applications. They tend to help establish priority over competitors in an industry where short design cycles are the norm. The potential downside is that you may not be able to rely on your provisional filing date. Remember that you can only own what you teach. If the provisional is not enabling, or is lacking in written description, you may not receive the benefit of your earlier filing date. Even so, the chance of not receiving the benefit of a deficient provisional application is still more appealing than the certainty of not receiving the benefit of a provisional application that you never file.
Rather than fret over whether you are filing too early I suggest that you do two things. First, draft your provisional applications with as much enabling detail, real data, and actual examples as you can muster, given the state of development. Second, refrain from making any public disclosures or offers for sale until you have filed a non-provisional application. You need to avoid taking actions that could create a statutory bar in the United States, or defeat novelty in foreign jurisdictions, in the event that you cannot rely on your provisional filing date.