Why Is a Provisional Patent Important for Your Invention?

A provisional patent application is a 12-month place-holder for a utility patent. The USPTO allows you to label your invention as Patent-Pending during this 12 month period. If a utility patent is not filed within the 12-month period, your spot in line is lost! Once the utility patent is filed, your utility patent filing claims the patent priority date as the provisional filing date. The patent priority date is the date from which you have a legal claim as the first inventor to have invented the subject matter of your patent application. As such, the patent priority date is an important factor for the examination process through which the utility patent undergoes.

The provisional patent application never gets examined for patentability, it only serves as a place holder for examination – however, the patent examiner will carefully scrutinize the content of the provisional patent application during the non-provisional patent application process. So it’s important to have your provisional patent application compliant with all applicable laws in order for it to preserve the patent-priority claim – otherwise, the Examiner can withdraw the patent priority claim and inventors are put in a bad spot, thinking they were patent-pending during the provisional patent process when in fact their patent pending status gets withdrawn upon the examination of the non-provisional utility patent application!

So, a provisional saves your spot in line for a utility patent. It is especially important in our first-to-file patent system. It is especially important as you market and as you share your invention/idea with engineers, developers, or those with deeper pockets than you! It always preserves your claim to the invention as those engineers/developers further improve on the invention.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, Georgia Institute of Technology, and Coca-Cola. 

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Can I Break a Provisional Patent into Multiple Filings?

One provisional may serve the basis to as many non-provisionals as you would like. As long as you file at least one non-provisional within 12 months of the provisional, you can continue to file additional non-provisional claiming priority back to the same provisional SO LONG AS you do not add ‘new subject matter’ that was not covered/anticipated by the provisional.

This means that you can split the provisional into two or more non-provisional utility patent filings claiming priority back to the same provisional, so long as you don’t add anything new to any application. If you have additional subject matter you would like to include, the additional subject matter should be filed in a separate filing known as a Continuation-in-Part (CIP). For CIPs, the new subject matter gets a patent priority date even with the CIP’s filing date, while the originally presented subject matter keeps its original patent priority date.

Exception: if you come up with NEW ideas that aren’t covered by the provisional, but it’s still too soon to file the non-provisional (your product isn’t at its final stage), it would be advisable to file a second provisional. Then, a non-provisional utility patent can claim patent priority back to multiple provisional applications. In this way, you get the earliest possible priority date for each of your inventions.

Consider this article for further reading.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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When Should I Convert My Provisional Patent Application to a Non-Provisional Utility Patent?

I usually get asked the question: If I rush to convert my provisional to a non-provisional patent filing, does that reduce the risk of someone having a third party receiving a patent on the same subject matter?

Typically, there is NO rush in filing the non-provisional utility patent application once you’ve already secured a provisional patent application. Whether you file the non-provisional patent application the next day or 11 months and 20 days from the priority date established by the provisional, your patent priority rights will be the same.

In fact, the long your wait, the longer your effective patent coverage may actually be. Consider that a utility patent grants the inventory rights to exclude others from making, using, and selling the patent invention for a period of 20 years after the non-provisional patent filing date. So, if you have a priority date 1 year prior to the non-provisional filing date, that creates an effective patent priority of 21 years.

But there’s a catch to waiting – Warning: The longer you wait to convert your provisional patent application to a non-provisional, the greater the potential of someone obtaining a patent on the same subject matter as you – even if you have an early patent priority date established by your provisional patent filing.

Here is why: consider that a provisional patent application is never disclosed to the public. It’s kept confidential by the USPTO, and not even patent examiners assess provisional patent applications when they examine non-provisional utility patent applications.

This means that, while you are ‘patent pending’ with a patent priority date secured by a provisional patent filing, another applicant may apply for a non-provisional patent. In some instances, the patent examiner may begin examining their patent application while your provisional patent is still pending under confidentiality. This means that your provisional patent application may not be used as prior art against the subsequent patent filer. In turn, the subsequent patent filer may be granted a patent, even though you had an earlier filed provisional!

Correcting this is an up-hill battle and the subject of a different article.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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I Received a Provisional Patent Filing Receipt in the Mail – What Does It Mean?

A provisional patent application filing receipt indicates that the USPTO has granted you a patent priority date. The patent priority date is the same day as your patent filing date in the case of a provisional patent application filing. From this date forward, you have 12 months to file a non-provisional patent application claiming priority to the provisional. If you miss this deadline, your provisional patent priority date will expire and not be recoverable!

Three important things to note, however.

First – make sure that the filing receipt isn’t accompanied by any other notice. For instance, the filing receipt may accompany a notice to file missing application parts or a notice to file corrected application papers. These notices indicate that your application was filed with defects which, if not corrected within a specified date, will cause your application to be rejected and the patent priority date lost. In some instances, if you’ve already missed the deadline – an extension filing is possible. It is advised that you immediately consult a Patent Attorney if you received such notice.

Second – This document does not mean your patent application was deemed patentable. In fact, in the case of a provisional patent filing, the United States Patent and Trademark Office (USPTO) does not examine the patent application on its merits (e.g., it doesn’t consider the subject matter of your patent app). Rather, it merely makes sure that all of the administrative formalities have been properly accounted for and, with such accounting, holds your patent priority date for twelve months.

Third – A Foreign Filing License (or a Foreign Patent Filing License) is granted. With each patent filing, the USPTO makes sure that the subject matter of the patent filing is not under export control. Typically, inventions that may be modified for use as a weapon, as well as several other inventions under export control, are tagged for confidentiality and prohibited from disclosure outside of the US. (See International Traffic in Arms Regulations (ITAR) and EAR). This happens in a very small fraction of all patent filings. As such, the USPTO requires that all inventions conceived in the US are first filed with the USPTO before the inventor can file outside of the US. Once cleared, a foreign filing license (FFL) is issued to the inventor/applicant.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Public Disclosure – What Happens If Someone Files for a Patent Before You Do?

If an inventor disclosed his/her invention to his partners/university/employer, probably had some form of public disclosure, but did not have a provisional patent – what happens if a person with a similar invention had a provisional patent filed which could come after the first inventor’s disclosure? Which inventor gets the patent?

The inventor entitled to a patent would be the first inventor to file a patent application. This is known as the First-Inventor-to-File patent system that the US adopted in March of 2013. The only way that the earlier inventor can restore his/her patent priority to the invention in this scenario is if the earlier inventor can prove that the first-filing inventor derived the invention from the earlier inventor’s public disclosure.

If this cannot be proven, there are a couple other avenues. First, we must consider what kind of patent application that the first-filing inventor may have filed. A provisional patent is NEVER disclosed by the USPTO to the public. They are kept confidential. Provisional applications also don’t undergo patent examination. Once the first-filing inventor converts the provisional patent application to a non-provisional utility patent, then patent examination begins. At the 18-month mark of patent examination, the USPTO will (with some exceptions) publish the utility patent application for public inspection.

Now, once the application is available to the public, earlier-inventors may submit evidence to the patent examiner of prior public disclosure (also known as prior-art). This evidence would be considered by the patent examiner and may be used to prevent the first-filing inventor from obtaining any patent rights. This however, does not entitle the earlier-inventor to any rights themselves.

The best thing for the earlier inventor to do in this scenario to preserve their own rights with (for example, a provisional patent application) within 12 months of the public disclosure. Then, when the first-filing inventor’s patent application publishes, the earlier inventor may attempt to oppose the first-filers application by proving that the first-filer derived the invention from the earlier inventor’s public disclosure. Having successful opposed the first-filers application, the earlier inventor’s patent application now takes the spot for patent priority!

This process is complicated and this is why it is important to have at least a provisional patent application on file before any public disclosures are made!

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can Social Media Apps Get Process Patents?

I am creating a social media app. Do I have to patent the process of what the app does? To avoid copycat versions? Or do I have to launch and create a big network effect? I am not creating any new software or technology, but the way the process puzzles together is innovating.

Processes are patentable if they are innovative! Sometimes, the process of using the app is innovative – other times, the function of the app enabled by the process is innovative. Both instances are patentable, even if the hardware/software that facilities the processes is not innovative in itself. I strongly advise against making any launch until at least a provisional patent application is filed. Here is why:

  1. First Come, First Serve: The US patent system will only award a Patent on an idea or invention to the first inventor who files a patent application. If you aren’t the first to file, you risk losing your patent rights.
  2. The Clock is Ticking: If you don’t file a U.S. Patent Application within 12 months of public disclosure (such as sharing your idea with others) or within 12 months of offering your invention for sale to the public, you lose your patent rights. Even still, the longer you wait, the greater the risk of someone else filing a patent application for the idea you came up with first.
    • Important Note: Although the US gives you a 12 month “grace” period to file a patent application after your first public disclosure, most other countries in the world do not. This means, in those countries, you will have lost your patent rights if you’ve made a public disclosure before filing the U.S. patent application.
  3. Filing a Provisional Patent Is a Great Place To Start: It’s affordable and it’s an essential take away from these 3 facts. A provisional application secures your priority date (your spot in line) to the patent rights while you develop your idea, market it, and raise funding. This helps to ensure that no one will beat you the patent office. Our platform has made the provisional patenting process quick, easy, and affordable for thousands of entrepreneurs and businesses across the nation.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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How Can I Prove I Am Patent Pending for a Provisional Patent?

In the US, provisional patent applications are kept as confidential documents, away from public availability. There is no publically accessible database in which you can search or verify provisional patent filings. This is to protect and preserve your rights while your product is still in the beta/development phase. It also allows you to let the provisional patent expire without having lost your patent rights since the subject matter of the provisional was never published.

If investors ask for proof, simply show them the records of your provisional application, which includes a filing receipt. Be sure that the disclosure is done under a Non-Disclosure Agreement. About 2-4 weeks after you file your provisional patent application, you will receive an official notice from the USPTO. You can also show this Official Notice to investors.

In the mean-time, you need to have virtual patent marking putting the public on notice that you are patent pending and, if you are selling your product, in your product packaging materials, you should reference your virtual patent marking that you should place on your website immediately. If cost is an issue, please let us know and we will give you this product at a discounted rate.

When you file your US non-provisional, you will reference your US provisional Patent Application No. to claim priority. During the filing, your attorney will submit a request for the USPTO to send a copy of the provisional patent application to the International Bureau.

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If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Can I Talk about Things Not in My Patent?

I have a provisional patent filed, and I am speaking at a Conference about my invention.  However, at the conference, I intend to disclose new features that aren’t covered by the provisional patent.  Big companies, including competitors, will be at the conference.  What should I do?

To the extent that you will be disclosing, at the conference, subject matter that was not originally covered in the first provisional patent, you will be 1) forfeiting your international patent rights to that un-covered subject matter, 2) you risk misappropriation of your uncovered subject matter to the competitors; and 3) keep in mind, we have a ‘First-to-File” patent system – if someone else files a patent on your uncovered subject matter before you do, it will be an uphill and costly battle for us to prove that the patentee derived the invention from your public disclosure.
To resolve this issue, I would recommend another provisional filing on the new subject matter.  A patent attorney can do this for you at a reasonable fee.  Then, when we’re ready for the non-provisional – you can claim priority to both of the provisional filings.  This is a very common strategy for incremental improvements prior to the ‘final product’.

Please keep in mind – I am a patent attorney and am advising you as to the legal implication of your questions.  The ‘Business’ decision should take into account other factors – including budget, risks, and rewards.  In other words, I will advise you on how to move forward in a legally ‘sound and secure’ way – but I am only considering the legal implications and no other implications.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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When Are Provisional Patents Effective?

USPTO provisional patent application simply secures your ‘spot in line’ or patent priority date to a later patent application filing.  After you file a provisional application, you will have one-year to follow with a non-provisional (full) patent application to maintain the patent priority date secured by the non-provisional.  It’s important to secure your patent priority date since the inventor with earliest patent priority date may be the only one to win any potential patent rights to an idea in a FIRST-TO-FILE patent system.

Here are two weakness of the the provisional patent application:

  1. If you have a provisional patent application securing a spot in line, and a third party files a non-provisional on a similar/same invention after your provisional filing date, their application will enter examination before yours and the patent examiner will not have access to your provisional filing to ‘reject’ their non-provisional application until you convert your provisional to a non-provisional.  To make matters worse, if the third party files for a non-provisional with an ‘accelerated examination’ request the USPTO, there is a chance that they might be granted a patent before you even have a chance to convert your provisional to a non-provisional.   This puts the burden on you to monitor the patent filings and inform the patent examiner of your earlier filing date – this is time consuming, prone to problems, and can cost you more than having filed a non-provisional in the first place; and
  2. Often times, provisional patent application don’t give you secure coverage for international rights.  Not every country has a provisional filing system, and claiming priority to a provisional in an international patent, or PCT application, means that the provisional application claimed has all of the elements that a non-provisional patent application would have per international standard – which, in the US, is not required by law.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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If I File a Provisional, Will It Hurt My Competitor?

Yes, because it will ensure that any patent rights to the subject matter of your application are reserved for you, the first-filer. This provides you a chance to trump someone who is attempting to claim those patent rights. In this way, we address the problem before the competitor is issued a patent. The fees to challenge a patent are not applicable until there is an actual patent to challenge. If we notice a competitor filing, we quickly covert our provisional to a non-provisional. The non-provisional will then have a priority date of the provisional (which is before the competitor’s filing). The Examiner may then use our non-provisional application in rejecting the competitors filing. If we were to approach this without having a provisional on file, we could pay $30k+ in fees to invalidate against a patent or wait for litigation and defend on the grounds of our prior usage rights (patent litigation). Either way, without at least a provisional on file, we would risk to lose our own patent right’s due the patent office’s “First-to-File” standard.. and, in addition, deal with the potential of extensive costs down the road.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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