Save the Date for Patentability: A Case in Favor of Provisional Filings

As previously discussed, a provisional application will never issue into a patent without filing a non-provisional within a year. However, the provisional application can have its uses. For example, consider that public disclosure of an invention creates an absolute bar to patentability in the United States, if a patent application is not filed within one year of the disclosure. In fact, some foreign countries cut off rights to a patent immediately upon public disclosure before filing. Why, then, would an inventor go with a provisional filing?

The first scenario is speed. Many businesses participate in trade shows to put their ideas and product developments out into the community. This can show the innovative nature of the company and draw pre-orders for new products. However, an invention may be stolen by others after these product presentations. A provisional filing only includes a description of the invention with the technical requirement of patent claims. Therefore, a provisional filing can be prepared and filed when an invention is developed and will be pitched at an upcoming trade show.

The second scenario is cost. Some product developments may involve a limited budget where the goal is to determine market interest before pumping cash into the project. In light of the public disclosure bars, the low-cost provisional filing may allow up to a year for customer surveys, trade shows, and market development to gauge interest before diving full bore into a non-provisional application.

However, a non-provisional application is recommended if time and budget permit. This route allows saving long-term costs for one filing rather than two. Furthermore, the provisional only allows priority for material that is described. Therefore, the additional technical requirements of the non-provisional may help develop aspects of the invention for a more complete description.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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