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A Provisional Patent Application (PPA) gives the filing entity a period of 12 months to claim, “Patent Pending” status. This application in effect establishes an early filing date, which later would be used as the formal filing date when filing a Non-Provisional Patent Application (Utility Patent).

Typically, products entering the commercial market start out with a PPA in place. This allows the filing entity to gauge whether the product will gather sufficient interest and/or market penetration to justify the filing procedures and costs of a utility patent. Having this PPA in place provides the filing entity with a first line of defense against counterfeits and copycats. As a bonus, it allows the filer to claim, “patent pending” status which adds a layer of seriousness to the product.

A common mistake by new inventors is to assume a PPA “becomes” a utility patent automatically. This could not be furthest from reality, as a utility patent undergoes a completely different, and much more stringent examination process. The USPTO gives PPA’s a 1-year long lifecycle. After completion of this year, the filing entity must file a utility patent application to begin the formal patent examination process. The benefit of filing a PPA is that the inventor can claim an early filing date which will limit the amount of prior art that can be used during the examination process. There are some caveats to this early filing date, for example, this early filing date will not be used if the utility patent is filed late. Also, any content included in the utility patent which was not claimed in the PPA will nullify the early filing date.

A widely known fact is that your invention can be sold to a third-party once a PPA has been filed and the product has patent pending status. However, if the product is developed during the 1-year PPA grace period, and new content is added to the utility patent, this will nullify the early filing date, creating complications for the inventor.

Non-Provisional applications cost more than PPA applications and require more detail within the technical texts and drawings. Many inventors choose to leverage the 1-year provisional period provided by a PPA filing to price-test their inventions and establish a baseline for commercial viability. If after the passage of 12 months the inventor has determined that commercial viability is not optimal, he can choose to either sell it, withdraw it, or allow it to lapse. However, a Non-Provisional Patent must be filed if the inventor realizes that there is market potential and he wants to continue his commercialization efforts. Failure to file this continuation will result in the expiry/lapse of the initial application.

Does this process seem confusing to you? Let us guide you through the process. Every idea is different, every inventor is different, and your Vision for your product could be different than everyone else’s. Allow us to craft a custom plan for IP development along with a timeline and the proper deliverables.

 

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