Provisional Patent Applications: Preserving IP Rights

Under the first-to-file patent system, a patent claimant should file a patent application as soon as possible. Provisional patent applications will establish priority and meet the need to act quickly under the new system. A provisional application extends the term of patent protection for an additional year.

Patent counsel must understand and weigh the benefits and limitations of the provisional application before filing. The application lays the foundation for procuring a patent, avoids statutory bars, and preserves absolute novelty for foreign filings. However, it also may result in the loss of trade secrets and delay in patent issuance.

How far should patent counsel go to ensure that non-provisional applications obtain priority back to provisional applications? Non-provisional applications will not receive priority over inadequate provisional applications. However, once an insufficient provisional application has been filed, there is no way to restore priority to the filing date of the inadequate provisional application.

Listen as our panel discusses the benefits and limitations of provisional patent applications as well as when and why to use provisional patent applications. The panel will examine the issue of priority and tying non-provisional applications to the provisional patent application and offer best practices for leveraging provisional applications.