Patent Attorney With Brooks Acordia Explains Importance Of Provisional Patent Applications

Law Firm Newswire



Los Angeles, CA (Law Firm Newswire) October 21, 2013 – Under the “first-inventor-to-file” patent system created by the America Invents Act (AIA) of 2011, an increasing number of inventors are encouraged to file provisional patent applications.

A local intellectual property attorney says that because filing a provisional application secures a priority date with the United States Patent and Trademark Office (USPTO), the process is likely to be employed far more than it was under the nation’s former—pre-AIA “first to invent” patent system.

“Provisional applications are more important than ever under the “first to file” regime of the America Invents Act,” said Los Angeles patent attorney Pejman “PJ” Yedidsion. “We encourage all our clients to file provisional applications early, and often, in the course of development of their inventions.”

A provisional patent application is an inexpensive way to begin the patent process. The fee due the USPTO for small entities (individuals and companies with 500 or fewer employees) is currently $130, and the fee for micro entities (available under the AIA) is just $65. Small entities not named on more than four previous patent applications and not exceeding three times the national median household income may qualify as micro entities.

It is important to note that the word “provisional” describes the application, not the patent – there is no such thing as a “provisional patent.”

Provisional applications do not require a formal patent claim, formal drawings, or an information disclosure statement (prior art statement). For this reason, they are relatively easy to prepare, and associated legal fees are affordable. As soon as a provisional patent application has been filed, the inventor may apply a “patent pending” claim to their invention and/or products.

“The first provisional application should be filed as early as possible – that is, as soon as the invention can be clearly described,” Yedidsion went on. “Inventors need not worry that the invention will inevitably change in nature as the process continues. Subsequent provisional applications should be filed whenever the invention changes in any significant way.”

A provisional application provides a 12-month benefit of priority to non-provisional applications and foreign-filed applications – for example, PCT applications. A corresponding non-provisional application must be filed during that period in order to benefit from the earlier filing date of the provisional application, otherwise the provisional application becomes abandoned. Filing subsequent provisional applications will not extend the 12-month period.

Yedidsion added that another way in which the AIA encourages provisional applications is by weakening the one-year grace period protecting patentability. Prior to the AIA, inventors had a one-year grace period in which to file an application after their invention was publicly disclosed by themselves or a third party. Now, that grace period only protects disclosures made by the inventor or derived from the inventor.

“The disclosures of a third party can destroy the patentability of your invention under AIA,” Yedidsion said. “Accordingly, it is a good idea to file a provisional application as soon as you can describe your invention in concrete terms.”

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