I Want a Patent – How Soon Is Too Soon?
Clients and prospective clients are often eager to obtain patent protection even though their new product (invention) is still “under development”. They often ask: “When should I file a patent application?” and “What type of application should I file?”
If the core of your invention is fairly well established but you are still making improvements, you should strongly consider filing a U.S. provisional patent application.
A U.S. provisional patent application expires 12 months after it is filed. While a provisional application, as such, is never examined by the U.S. Patent and Trademark Office (and thus will not mature into an issued U.S. patent), a provisional application can form the basis for U.S. and non-U.S. patent protection if the proper steps are taken. (Essentially, to retain the benefit of the “provisional” filing date, the provisional application must be converted into a regular, non-provisional U.S. application and/or an International [PCT] application before the end of the 12-month period.)
Thus, in a situation where the product is fairly well developed but refinements are still being made, filing a provisional application would allow the applicant to “lock in” an early effective filing date for the core inventive concept while still leaving opportunities to supplement the original filing during the 12-month period.
This approach highlights some of the major benefits of starting with a provisional application when the core inventive concept, while mostly complete, is still being “fine tuned”. Any time during the 12-month period, you would be able to supplement the first provisional with one or more additional provisional applications—for example, to cover any newly-added features, improvements, modifications, etc. (Typically, the sum total of all provisional disclosures is converted into a regular application during the 12-month period of the first provisional application so as to retain the early effective filing date of the first provisional.)
Additionally, at the time of converting the provisional application(s) to a regular, non-provisional application, you would again have the option to supplement the provisional disclosure.
The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about filing U.S. provisional patent applications or any other aspect of intellectual property law.