Both established companies and startups are increasingly utilizing provisional patents as part of their IP strategies, recognizing the unique benefits they offer. If not done properly, however, provisionals can leave applicants unprotected and jeopardize the validity of their patents down the road.

In a recent interview with Law360, Partner Jeffrey Snow, Co-Chair of Pryor Cashman's Patent Litigation and Patent Prosecution practices, discussed what inventors and businesses need to know when applying for provisional patents.

Background

Provisional patents are often regarded as placeholders which can help filers stake a claim to inventions by securing an earlier filing date with the U.S. Patent and Trademark Office. Yet, this was not always an option. In 2011, the United States transitioned to a "first to file" system for patents, under which patents are granted to the first person to file an application, regardless of when the invention was created.

Provisional patent applications must include a description of the invention, but needn't contain formal patent claims, and grant inventors a "patent pending" designation for up to 12 months, after which time a full application must be filed.

Knowing When to File For a Provisional Patent

In addition to understanding the formal filing requirements, anyone contemplating a provisional patent should consider how it can be used to advance their business objectives. For example, emerging entities may have an invention they would like to share publicly to attract investors. It may not be a good idea to disclose that invention in a presentation or at a trade show, for instance, without first filing for a provisional patent, which can offer significant protection.

Provisional patents are also attractive because of the lower cost and time-saving they afford compared with full patents. "You can secure your priority date early, you can put as much effort into it as you're able to and you can do so without necessarily having to meet all the formalities and incur all the costs with a full application," Snow told Law360.

Benefits of Provisional Patents

Beyond cost-saving and greater efficiency, the one-year window offered by provisional patents allows holders to test the market or further investigate "prior art" - any evidence demonstrating that an invention is already known - to assess whether it is commercially prudent to invest more time and money into a full, nonprovisional patent. This window can be especially beneficial for new technologies, where there may be uncertainty regarding patentability or whether consumers will be interested in purchasing the invention.

Recognize Potential Pitfalls

Filers must bear in mind that, even with provisional applications, there are patentability requirements, including a written description of the invention and an explanation of how it is made, which must be met. Deficient applications may give applicants a false sense of security, when in reality, the filing will not safeguard their rights. "You want to look at what's going to be filed to make sure there is sufficient disclosure there," Snow emphasized.

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Originally published by Law360.

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