What to Know About Provisional Patents

Provisional patents can be extremely beneficial as part of the process of filing a non-provisional application. Provisional patents grant the filer a 12 month period before the requirement to submit a formal patent takes effect, thereby establishing a patent priority date through a low cost, relatively simple process. In addition, the 12 month window allows inventors to evaluate the viability of the invention in the public sector. But it is essential to properly prepare and file a provisional application in order to attain the benefits that accompany a provisional filing.

The most important component of a provisional patent application is a full and comprehensive description of the invention. A quick, cursory explanation on a provisional application will not be deemed sufficient to protect an inventor’s patent rights. The court in Novozymes A/s v. DuPont Nutrition Biosciences APS nullified a patent because its application (along with its provisional filing) demonstrated a lack of knowledge as to the nature of the invention.

The ruling in Novozymes is instructive for prospective patent applicants who want to use research proposals for the substance of their applications. Inventors should instead focus on describing what the invention accomplishes and the functional application of that result. In a worst case scenario, an inadequate provisional application can be used by others to assert that either there was no invention, or it had not progressed past the point of expressing an idea at the time the provisional patent was filed.

In addition to providing adequate disclosure about the invention, the provisional application should include relevant claims. Although claims are not legally required, claims in the final application must have been disclosed in the provisional application filing; an omission may result in the loss of priority date for the final application. If improvements or features are added to the invention, a new provisional application must be filed to reflect these modifications.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients through the entire patent process and the subsequent protection of rights in the patent. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

Dylan Connors

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