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Provisionals vs. non-provisionals – what to file?

Chess pieces In an ideal world, inventors would only ever file non-provisional patent applications. We would have plenty of time and resources to thoroughly discuss the invention and work out the claims, draft a detailed specification and prepare a complete application. In the real world, unfortunately, this isn’t always possible. How do you decide whether to file your application as a provisional?

1. Do you need more time before you are ready to specify “the invention”? Some companies want to file a non-provisional application but they’re not entirely sure what precisely the invention is that they want to patent. Consider an early stage company with an invention useful in dozens of markets. They want to release a beta version of the product, run trials in different markets, get user feedback, and refine their thinking before committing to a particular implementation or market. But since any of those activities might hurt their patent rights later on, they want to file for a patent first. This is an ideal scenario for filing a provisional as it buys them a year in which to figure out which versions of the invention are most important to them before they have to specify, and pay for, any claims.

2. Do you need to disclose the invention today? A company may find itself in the unfortunate situation of having to make a detailed public disclosure about a particular invention before they know whether they even want to patent it. In the rush of filing a last-minute application, there’s always the risk of inadvertently leaving out critical data from a provisional. However, a company decision-maker might say, “Well, if I had done nothing at all I would not have been able to file for the patent either. So even with the risk of this pitfall, I’ve improved my chances of being able to get the patent I want.” If the company’s okay with the risks, such a filing can be a lifesaver.

3. Do you need more money before you can pay for a patent? This is both the most dangerous and most popular rationale for filing a provisional. We’ve already discussed the pitfalls of writing an application on your own. However, for about 1/3 to ½ the price of a non-provisional, you can work with a patent attorney who will coach you through the process of writing a provisional application and help you avoid those pitfalls. In that scenario, you can save some money in the short-term and still get the benefits of filing a patent application.

So, even though we might prefer to have the ability to always file non-provisional patent applications, there are some situations in which a well-drafted provisional application can help a company preserve its IP rights in spite of resource constraints.

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