Should Inventors File Provisional Patents?

Should Inventors File Provisional Patents (Article 8)

As an initial step toward filing a patent, a provisional patent application has several significant advantages for the filer. A provisional patent application that effectively and comprehensively describes the invention has the benefit of establishing priority and satisfies the “first to file” requirement. With the implementation of the America Invents Act, effective in 2013, the U.S. became a first-to-file jurisdiction in contrast to the first-to-invent laws that previously characterized federal patent law. A provisional patent filing establishes a filing date with the United States Patent and Trademark Office (USPTO). Executing a well-drafted provisional patent application as soon as reasonably possible in the increasingly competitive arena of pursuing patents is the quickest, most effective means of compliance.

The provisional application process has several additional advantages that should be considered by potential patent applicants.

  • Provisional patent applications have reduced filing fees and simplified technical requirements, thereby making the process more administratively and financially feasible for patent seekers.
  • Provisional patent applications provide a one year coverage period for inventors to assess the viability of their inventions before a non-provisional application must be filed. This allowance enables filers to test the commercial possibilities for their inventions and to tweak their innovations based on feedback they receive. In addition, this one-year preliminary period also allows patent holders to extend the prescribed 20 year patent term to 21 years, beginning with the provisional filing date.
  • A provisional patent applicant can make use of the “patent pending” notice without filing a non-provisional application. This notice can be a powerful deterrent to potential infringing parties.

Leon E. Jew is an experienced intellectual property attorney with broad knowledge in patent prosecution, trademark and copyright registration, intellectual property litigation, and business immigration matters.  Jew & Associates assists inventors and businesses in patent registration and can help you determine how to best proceed in the patent application process. Contact us at (925) 463-3288 or visit Jew & Associates online to schedule a consultation and learn more about our practice.