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  • Logendra Naidoo

"Ok, I filed a provisional patent. Now what?"

Updated: Apr 28


The person or corporate entity that was the first to file their idea as a provisional patent or a comprehensive patent application is the rightful owner of that official registration recognizing the invention. A provisional patent application filed to the USPTO by a recognized patent agent, buys you more time (under a year the moment it is filed) to draft a proper patent application. Again, a provisional patent essentially provides proof that you intend to protect today's idea within a year.

Furthermore, because your patent provisional is not examined, the applicant avoids the higher costs associated with a standard patent application prosecution (i.e. drafting, attorney's fees during office actions, etc.) for 12-months. During that timeframe the applicant can spend more time determining if the invention is commercially viable or curry up additional funds for the standard patent application.

Failure by an applicant to file a patent provisional often leads to the inadvertent public disclosure of their invention (e.g. "To be honest, we went ahead and launched it because we didn't think it was patentable."), in which case one must thoughtfully consider their remaining intellectual property rights. In the United States, if a patentable idea is disclosed publicly (with no provisional or non provisional patent protection), you can still file your U.S. patent application provided it is within one-year of the first offer to sell your invention, or within one year of the first public use (or disclosure) of that invention. A simple calculation determining the first official offer to sell date, or the date of first public disclosure, determines your legislated rights to an invention that may still be available. If that crucial point in time is more than a year from that offer to sell or public disclosure date, it is unfortunately too late for you to file a patent application.

"A disclosure made more than one year before the effective filing date of the claimed invention is prior art..." https://www.uspto.gov/sites/default/files/ip/global/grace_period.pdf


Filing a provisional patent application secures a filing date. If a nonprovisional patent application is filed within a year from the filing date of the provisional patent, the applicant inherits the filing date of the provisional application.


Note: In Canada (CIPO), the "provisional" process is similar to the USPTO, albeit less popular, and it amounts to filing an incomplete patent application to achieve the same effect.


Please note that the USPTO does review provisional patent applications only to ensure sure they fulfill the minimum filing requirements. Provisionals are never published by the USPTO. And (I saved the best part for last), the applicant can use the term "Patent Pending" during the one-year pendency of the provisional patent application. This means the applicant is legally protected when describing the particular invention using the 'patent pending' designation.


The applicant of a provsional patent application maximizes the potential recovery of damages with an infringer when/if the patent is issued/granted by the USPTO (not before). Damages are calculated based on the date the perceived infringer received notice, in which case the merit in marketing your invention using the patent pending designation becomes clearer.


For startups, patent pending status allows you to strut your technology with potential seed capital investors and deters others from absconding your idea or product from you during that critical phase.


When in doubt, first contact Planetary IP and we'll get you the answers you seek and file a provisional or nonprovisional patent application in a timely manner to protect your innovation.

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