The following is a case study example to help companies with questions about Provisional Patent Applications.
Five Months Ago our Company’s Engineer filed a Provisional Patent Application – What can we do?
First, the facts: A Provisional Patent Application does not generate a Patent. Patents are always granted from Nonprovisional Applications.
Your company has several options – provided the Provisional Application is directed to:
- The patentable subject matter required by 35 United States Code (U.S.C.) 101 in view of the judicial exceptions thereto; and
- Is enabled and the best mode is disclosed as required by 35 U.S.C. 112.
Options for the Company’s Pending Provisional Patent Application
If the Provisional Application meets the requirements of 35 U.S.C. 112:
- Allow the Provisional Application to expire at one year from the filing date of the Application
- File a US Nonprovisional Application claiming the benefit of the Provisional Application
- File an International Application claiming the benefit of the Provisional Application
If your Provisional Application does not meet the requirements of 35 U.S.C. 112:
- Prepare and file a new Provisional Application
- Prepare and file a Nonprovisional Application that does not claim the benefit of the previously filed Provisional Application
Provisional Patent Application: Next Steps
Actions that can be implemented subsequent to the filing of Provisional Patent Applications
- Contact a seasoned patent attorney in a timely fashion. (Do not wait until three weeks before the Provisional Applications will expire to contact a patent attorney.)
- If an international-type of Patent Application claiming the benefit of the Provisional Application is to be filed, engage the patent attorney at approximately six months subsequent to the filing date of the Provisional Application
- If only a US Nonprovisional Application is to be filed claiming the benefit of the Provisional Application is to be filed, engage the patent attorney at approximately nine months subsequent to the filing date of the Provisional Application
- If formal Drawings were not filed with the Provisional Applications, drawings in accordance with USPTO requirements should be prepared
- If time permits, conduct a Patentably Search and utilize a patent attorney to prepare a Patentability Report
Save Yourself Some Money
Although not required to file Nonprovisional Applications in the USPTO, it appears that clients utilizing the combination of a Patentability Search and Patentability Report incur less total expenses in procurement of a Patent than clients who opt to not utilize a Patentability Search and Report prior to filing the Nonprovisional Application.
Need Additional Help?
If you need legal assistance in preparing Patent Applications, please contact Business Patent Law, PLLC.
Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.
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