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The Importance of a Provisional Filing with the New Patent Laws

Our new patent laws grant the first inventor to file for a patent priority to any patent rights available to that invention. Before, our laws allowed an inventor to prove his date of conception to gain priority to the patent rights, even if the inventor was not the first to file for a patent on the invention. Now, the only factor that is considered when granting priority to patent rights is the filing date of the inventor’s patent application. The inventor with the earlier filing date wins the rights to the patent, even if another inventor can prove that he or she came up with the invention first.

In view of our new patent laws, provisional patent filings have become the primary way an inventor can prove he or she was the first to come up with an invention without actually going through the expensive patenting process. A provisional application for patent serves as an official notice to the Patent Office to hold the inventors place in line for a patent. From the filing a provisional patent application, the inventor has one year to follow with a formal, non-provisional filing not to lose his or her spot in line. During that one year period, the inventor can continue to work on improving the invention, gain investment, and best of all, promote the invention as “Patent Pending” without fear of someone else filing for his or her patent rights.

The provisional patent application was created as an inexpensive means to reserve patent priority to the invention while, for example, accumulating the resources to file for a formal non-provisional patent. With the new first-to-file standard, corporate entities have the economic resources to quickly file for patent protection. A provisional filing puts the startup/solo-inventor on equal ground.

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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