SHOULD YOU NOT FILE PROVISIONAL?

Posted by Michael Shimokaji | May 05, 2019 | 0 Comments

QUESTION: Can filing a provisional patent application hurt? Beyond the filing fee and time spent drafting a provisional patent app, are there any reasons not to file a provisional app? More accurately, could filing a poorly drafted provisional be worse off that not filing one at all? If it's later determined that the provisional was inadequate, a non-provisional can still be filed that doesn't claim benefit from the provisional, so long as the non-provisional was filed within 1 year of public disclosure, right? Also, a hypothetical situation: Let's say I filed a provisional containing subject material A, then immediately went public with the invention; 6 months later, during product testing I discover new material for the invention, let's call it B. If I file a provisional containing A+B (as soon as B is discovered), when is the non-provisional claiming A+B due? 1 year from provisional A or 1 year from provisional A+B?

ANSWER: Generally, filing a provisional is better than not filing anything – even if the provisional lacks information. In the above example, you could file a non-provisional within one year of filing provisional A, in additional to within one year of provisional A+B.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.

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