Mitchell Law PLLC

Provisional Patent Application Advantages

• During the year before filing the utility application, you may assess whether your invention is commercially viable before committing to the higher cost of filing and pursuing the regular patent application.

• A “Patent Pending” notice may be used on your invention or invention advertisements to deter competitors from copying your invention.

• Avoid building and testing your invention. A filed provisional application establishes a date of constructive reduction to practice. The U.S. awards patents to whomever invents first. Constructive reduction to practice (filing of the provisional application) establishes a date of invention. An earlier filing date may be established by proving a “date of conception” and showing diligence in reducing the invention to practice (e.g., filing the provisional application).

• Establish an official United States patent application filing date for the invention. Filing a provisional patent application gives you an official patent filing date. As explained above, the Patent Office awards patents to the first to invent, not the first to file a patent application. However, diligence from your date of conception to filing must be shown to retain the early invention date; complacency filing may result in forfeiture of your patent rights.

Provisional Application Disadvantages

• Inaccuracy will undo your protection. A provisional application that fails to explain how to make and use the invention cannot be relied on for establishing an early filing date, proof of invention, or constructive reduction to practice.

• Modifying your invention or adding new improvements (known as “new matter”) will force you to file a new provisional application or regular patent application. Modifying the manner of operation or adding any new technical information that was not in the provisional application inhibits reliance on the date of the provisional patent application for such new matter. A new provisional application that reflects these changes may be filed.

• You must file foreign patent applications within a year. You must file patent applications in any country in which you seek protection within one year of the provisional patent application’s filing date.

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