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.

yuri