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Avoiding Common Missteps and Strategic Use of Provisional Applications

May 19, 2022

In a prior post, I provided an overview of what a provisional application is, how it differs from a non-provisional application, and the requirements for a provisional application to be effective.  In this post, we will take a closer look at the most common mistakes associated with a provisional application filing and situations where provisional applications can be effectively used as part of an overall patent straegy.

Let’s begin with looking at some of the most common mistakes associated with provisional applications:

1) Incorrectly assuming the provisional application filing date will be effective regardless of the technical content it discloses. 

As explained my prior post, claims that are not fully supported by the description of a provisional application do not get the benefit of its date.  Therefore, in the absence of fully drafted claims, it is important to at least consider future claim strategy and ensure the description meets criteria to support at least one claim of value.

2) Overvaluing the effectiveness of a “quick and cheap” provisional application.

Not all provisional application are created equally. The quality and effectiveness of a provisional application is usually closely related to time and effort put into it. The perceived cost-savings associated with a provisional application almost always come with at least some quality and risk tradeoff. As with all business decisions, it is critical to understand these tradeoffs to determine the right approach in a given situation.

3) Operating with a false sense of security post-filing. 

Given the inherent risks of filing a provisional application with less than a complete description and claims, companies should operate post-filing with an understanding of the risk level.  This may mean continuing to exercise caution in activities that could cause of loss of patent rights, especially when the provisional application includes only limited details. Companies should also periodically re-assess their situation to determine when circumstances warrant proceeding with the non-provisional application.

How not to get an effective filing date!

Now let’s consider some situations where provisional applications can be tactfully used as part of an overall patent strategy:

1) When there is uncertainty regarding the long-term value of patenting a particular invention. Patent strategies can and should evolve over time together with the business strategy and product development cycles. In instances where viability and value of a solution is not yet certain, a provisional application can be a sensible strategic approach to preserve patent rights without fully investing in a non-provisional filing. Companies may employ a strategy of filing rolling provisional applications over a one-year period to capture new improvements as the technology develops.

2) When the company is an early stage startup operating on a tight budget.  Early stage startup companies generally have limited capital resources, making provisional applications a much more attractive option despite their potential shortcomings. Companies should understand the risk tradeoffs and requirements, but a provisional application can very often be the right strategic option for early-stage companies in this position.

3) When the company is planning to publicly disclose subject matter in the very near term and a full non-provisional application is not a feasible option.  While companies will ideally avoid this situation, it is not uncommon for a company to find themselves unprotected in advance of an imminent public disclosure.  Filing the publication as a provisional application in advance of the disclosure can operate to mitigate risk of potentially claimable subject matter becoming barred from patentability.

The above examples are just a subset of considerations that should go into a patent filing strategy. The right strategy for you may be unique to your situation based on a wide range of factors. Understanding where provisional applications can be useful and where they may fall short is critical to any patent strategy.

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