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5 Things to Consider when Preparing a Provisional Patent Application

Updated: Aug 26, 2020

Although the COVID-19 has shut down much of our workplaces, it has not slowed down creativity and innovation. In fact, the USPTO is reporting an increase in the number of patent filings over the last few months. Many of these patents may be corona-related, others are likely the result of more people spending more time, thinking how to do more with less.

Many inventors looking to cut costs are opting to file provisional patent applications, which require fewer formalities at the time of filing and offer a relatively simple and cost-effective option.

The advantages of provisional patents include enabling commercial activities, permitting inventors to use the mark “Patent Pending” and deferring costs.

Provisionals may seem like an invitation to go for a “quick & dirty“ solution. However, you should be aware that if the priority date of a patent is called into question, provisionals are held to the same standards as regular patent applications. There is no such thing as a ‘free patent lunch’.

Furthermore, inventors who file a provisional may enjoy a false sense of security and disclose the invention in public. Unfortunately, public disclosure of material not adequately covered in the provisional may render the later filed patent worthless.

So how can you be sure that your provisional is well drafted?

Attached is a checklist to review and verify – in an effort to ensure your provisional patent will indeed protect your innovation:

  1. Business strategy – have a clear objective. Articulate how the provisional and later filed patent will support your business.

  2. Description and figures – while a figure may be worth a thousand words, use both. Include figures and describe them in detail while identifying key components necessary to understand the invention.

  3. Inventive concepts – identify the key innovation elements that make it unique. Those that are one of a kind and have not been made public.

  4. Terminology – identify and clarify key terms and use them consistently throughout the application. Changes or contradictions in terminology may be detrimental to the quality of an application.

  5. Quality is paramount but quantity may help – including additional figures, examples, data and relevant documents to a well-prepared application can help. The provisional is meant to support a patent application that will be filed one year later. Many unexpected changes can and do happen in the life a one-year old invention. The additional material may provide support for protecting the more mature invention.

Last but not least,

Every Writer Needs an Editor. Even after you’ve done all of the work, the application should be reviewed by an experienced IP professional.Considering the high stakes, it’s well worth the investment.

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