Provisional Patent Application Lawyer NYC Francelina M. Perdomo Klukosky - Perdomo Law
NYC Provisional Patent Application Law Firm, Perdomo Law in Manhattan New York, NY 10007
Many people seem to be familiar with provisional patent applications, but misconceptions abound. This article will briefly explain what provisional patent applications are, why they should be used, and when (if at all) they should be filed.
What is a Provisional Patent Application?
A provisional patent application is a document filed at a patent office (many countries, including the US, allow provisional patent applications) that contains an invention disclosure but is not required to have any formal requirements, such as formatting rules, the presence of claims, a power of attorney, inventors declaration, etc. that are required for a non-provisional patent application. The only requirement is that the provisional have some kind of description and drawing if necessary of the invention. The filing fee is low also.
A few other key features of provisional patent applications are that they are never examined for patentability, and the filing of a provisional patent application does not count towards the twenty-year expiration clock. Only non-provisional patent applications start the expiration clock. That is, an issued patent normally expires twenty years from the filing of the non-provisional patent application. Since provisional patent applications are not examined, there is no such thing as a “provisional patent.”
Two other really key features of provisionals: (1) A non-provisional patent application that claims priority to a provisional patent application must be filed on or before the anniversary of the filing of a provisional patent application, otherwise the case permanently and irrevocably lapses. This is a very harsh rule. (2) The content of a provisional patent application is not locked. In effect, new subject matter can be added to a provisional patent application by filing one or more follow-on provisionals. A non-provisional patent application can then refer to more than one provisional patent application, as long as each provisional is filed no earlier than one year before the non-provisional file date.
Why Should I File a Provisional Patent Application?
Provisional patent applications have three important effects:
- They lock in a filing date for an invention; but …
- You can add to a provisional patent application by filing follow-on patent applications; and
- They defer the start of the patent expiration clock for one year.
Anyone of these effects can be an important strategic consideration for a patent owner. Locking in a filing date prevents a patent examiner from using any art published (or in some cases, filed as a patent application) after the filing date as prior art against you in a novelty or obviousness argument. In a crowded field, where there is a lot of publication activity, this can be a critical consideration.
Adding additional material to a case can be an important consideration in some technologies (for example medical devices), where a project is moving quickly, and new experiments and data are being generated. In addition, as discussed below, there may be a filing deadline that demands a quick patent application. Filing a follow-on application is usually a good idea if the original patent application is missing traditional features of a patent application.
With regards to the expiration clock, product life cycle varies depending on the technology and product. In some cases, getting an issued patent as soon as possible is critical, and the lifetime of the product may extend for twenty years. For example, a patent on a component for a smartphone will likely have a short life cycle. Mobile phones get all new parts every few years, so something developed now for a mobile phone or computer will likely not be used in 10 years. In this case, a patentee does not need an extra year of patent life. So skipping the provisional patent application filing step may be worthwhile.
Drugs are a different story. Develop life cycles for pharmaceuticals and biotech are very long, and a successful drug can be used for a long time. There very likely are drugs on the market now that will be used for many years into the future. So filing a provisional case to get an extra year of patent life at the end of the patent term can be very valuable, particularly considering that many drug products increase in value over time, so the last year of a patent may be the most profitable for a drug product.
Contact Top NYC Provisional Patent Application Attorney, Francelina M. Perdomo Klukosky, for a Case Assessment
Theoretically you can do this yourself, ask yourself if you want a high-quality patent ultimately that will stand up in court. If you do (and you should), then get competent patent counsel to help you file a provisional patent application. There are numerous pitfalls for amateur patent filers. By contrast, competent patent counsel knows all the tricks. A great lawyer will know the correct questions to ask, and will help you with your project. Many of the problems you could encounter years down the road with enforcing or licensing a patent can be avoided by starting off right with a good lawyer.
We can help you get the best possible patent application. We can help you design an effective patent filing strategy that meets your needs, and is tailored to your business goals. We look forward to working with you!
Please contact us for a case assessment.
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