The Problem With Provisionals: Part 3

Written By Zach Stevenson, Esq. – A Fellow at Georgia Lawyers for the Arts and Georgia PATENTS. Zach Stevenson is licensed to practice in the State of Georgia and the United States Patent and Trademark Office.

---

One of the most common misunderstandings I encounter when discussing patent law is with provisional patent applications.  Almost every inventor is determined that he or she must get a provisional patent.  Unfortunately, some clients will throw away time, effort, and money by not utilizing provisional patent applications correctly.  In this 3-part article, I hope to better explain the purpose, common problems, and best strategies to utilize provisional patent applications.

• Part 1: What is a Provisional Patent Application?
  • Understanding the United States Patent System
  • Provisional Patent Applications Explained
  • Converting to or Claiming Priority in a Non-Provisional Application
  • Provisional Patent Applications Must Become Utility Patent Applications
  • Requirements for Filing a Provisional Patent Application
• Part 2: Common Pitfalls with Provisional Patent Applications
  • Doing Nothing Within One Year of Filing a Provisional Patent Application
  • Paying Too Much for Provisionals – Failure to Claim Small or Micro Entity Status
  • The “Provisionals are Cheaper than Non-Provisionals” Fallacy
  • Failure to Provide Adequate Written Description
  • Drawings: Not Enough and Lacking Substance
• Part 3: Good Uses for Provisional Patent Applications
  • Crowded Field
  • Rushing to the Market
  • Upcoming Statutory Bar

---

Part 3: Good Uses for Provisional Patent Applications

There are typically three scenarios when it may be beneficial to file a provisional patent application before filing a non-provisional patent application.  These are: 1) the crowded field; 2) the inventor rushing to market; and 3) the upcoming statutory bar.

Crowded Field

The first scenario when an inventor may consider filing a provisional patent application is if there are many known competitors trying to solve the same problem as the inventor.  It is impossible to know when competitors are going to file a patent application, so one strategy is to submit multiple provisional patent applications as the inventor learns and discovers more about the invention so the inventor can retain an early priority date — hopefully the earliest priority date.  Before the year is up for the first provisional application filed, the inventor should convert the provisional patent applications into one or more non-provisional patent applications.  This strategy allows the inventor to keep an early priority date, but also permits the inventor one year to discover and invent a more marketable invention.

A quick word of warning: many inventors do not invent in crowded fields.  If an inventor believes this scenario applies to them, the inventor should immediately speak to a patent practitioner to best plan their legal strategy.

Rushing to the Market

The second scenario when an inventor may consider filing a provisional patent application is if the inventor is determined to begin selling or offering to sell a product covered by the invention within the next few days or months.  If the inventor is determined to bring their invention to market, it is likely time to file a provisional application covering all the known aspects of the invention.  Filing for a provisional patent application allows the inventor to mark the product with “patent pending.”  This provides notice to the rest of the world that the inventor is seeking patent protection for the invention.

Upcoming Statutory Bar

The final scenario when an inventor may consider filing a provisional patent application is if the inventor:

• Described the invention in a publication;
• Used the invention publicly;
• Placed a product covered by the invention on-sale; or
• Otherwise made the invention available to the public.

The previous acts prevent the inventor from obtaining a patent unless the inventor files a patent application within one year after performing the act.  For example, if an inventor disclosed, sold, published, or otherwise made the invention available to the public on January 1, 2018, then the inventor has to file some patent application, provisional or non-provisional, before January 1, 2019.

Filing a provisional application may be a good idea if there is little time remaining on the one-year time period.  To continue the previous example, if an inventor realizes they need to file information to preserve rights to file a patent application on December 20^th, 2018, the inventor may consider filing a provisional patent application because there are fewer requirements and the provisional patent application provides the inventor an additional year to provide the additional information to make the provisional a non-provisional.

Conclusion

Filing any application, provisional or non-provisional, with the USPTO has benefits and consequences.  Because filings may affect the rights to an invention, inventors should always seek advice from a patent practitioner before any filing with the USPTO.

---

If you are a Georgia, South Carolina, or Tennessee inventor still interested in seeking assistance filing a provisional or non-provisional patent application after reading this article, please feel reach out to Georgia PATENTS and Tennessee PATENTS to see if you qualify for patent pro bono legal services.