,

When Should I Get a Provisional Patent?

A provisional Application for patent may be filed anytime after your invention is created – once you are able to coherently describe how to make and use it. It is recommended that you file a provisional application before you publicly disclose your invention. In this way, you can publicly disclose your invention and put the public on notice that your invention has “patent pending” status.

Particularly under the recently-enacted America Invents Act, filing a provisional application for patent as soon as possible is best. As soon as you can describe your invention in terms such that “one of ordinary skill in the field of your invention,” would be able to recreate and use your invention based on your description, file your provisional application for maximum protection.

If you need to file later provisional applications to make adjustments that fit within the original filing, you can always do this and then combine all your provisional applications into a final, corresponding non-provisional application. You can’t broaden the original invention in subsequent provisional applications, but you can clarify, explain, hone or narrow it. This gives you a lot of flexibility as to how to proceed while ensuring that you have the best protection possible while you’re putting the finishing touches on your invention.

Important note: If you’ve already disclosed your invention to the public (such as by sale, offer for sale, use in public or written publication), a provisional application may still be filed to establish a filing date, but you have exactly one year FROM THAT INITIAL DISCLOSURE to file your non-provisional application–your disclosure starts the clock. In other words: a non-provisional patent application must be filed no later than one year after the public disclosure. Such disclosures include, but are not limited to: sales, offers for sale, written publication, disclosure to potential partners or finding source. Feel free to Consult a patent attorney if you’re unsure whether or not you fall into this category.

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