Provisional Patent Applications: The road to securing your patent rights

Business owners, investors and bankers consider national and foreign Patents and the goods and services associated with those Patents to be both intangible and tangible assets. Provisional Patent Applications are viable options for augmenting a company’s intellectual property portfolio.

Potential Patenting Pitfalls

There is a road you must travel  from inventor’s inspiration to the successful marketing and sales of the patented product, system, method, etc. That road must have well engineered bridges to successfully navigate the ravines that can otherwise destroy market share and Patent rights.

For example, the 2011 America Invents Acts includes a “limited grace” period to file a Patent Application – provided the conditions of 35 United States Code 102(b) can be fulfilled. However, is it prudent to rely on 35 United States Code 102(b), when an inadvertent public use of the invention can forfeit both national and international Patent rights for the invention that was inadvertently disclosed?

Provisional Patent Applications

Subsequent to the 2011 America Invents Act, the sensible business owner or CEO should consider filing Provisional Patent Applications to preserve future Patent rights.  Broad scope Provisional Patent Applications:

  • Provide substantive and procedural rights for one year from the filing date.
  • Permit the enterprise to make improvements to the invention disclosed in the Provisional Application which can subsequently be incorporated into a Nonprovisional Application and filed in a Patent Office before the expiration of the twelve month filing period.
  • Prevent public use, public disclosure, offers for sale and for sale bars to future Patents.
  • Allow the business to test-market the invention.
  • Allow the company the time to discern the real “inventive genius” of the invention.
  • Allow use of the Provisional Application as the priority document for national, foreign and international Patent Applications.
  • Encourage American inventors and engineers to quickly adjust to the worldwide “first to file” systems and to file the Patent Application, soon as possible, in at least one Patent Office.
  • Make it easier for the company to determine the relevant pool of capital for investment.

Provisional Applications Are Not The Only Solution

Changes happen slowly for some inventive segments of the global economy. For such inventions, the marginal costs of filing a Provisional Patent Application before filing the Nonprovisional Patent Application may not be warranted. However, if management has any doubt, it is wise to file the Provisional Application and be “safe” rather “sorry!”

Contact Business Patent Law, PLLC and we will discuss your business and Intellectual Property essentials.

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