What To Do After Filing Your Provisional Patent Application

Scott Thorpe
October 4, 2011 — 992 views  
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An inventor may file a provisional patent application to protect an idea while she continues to refine and develop that idea. For example, the inventor may begin work on a promising stent material concept for reducing scarring around a stent inserted in an artery. To protect the innovation, the inventor may file a provisional application detailing all the inventor knows about how the invention will be implemented. The provisional application will protect the idea by establishing a priority or filing date for the invention. The provisional application is then converted into a utility patent application within one year. The utility patent application can claim the priority or filing date of the provisional application for all inventive concepts that were included in the original provisional patent application.

Unfortunately, many inventors stop worrying about intellectual property protection after the original provisional application is filed until it is time to convert to the utility application. As a result, they miss several important opportunities to improve the quality and breadth of the utility application. Inventors can increase the value of a utility patent protecting an invention if after filing a provisional application they record alternate embodiments of the invention, note implementation details as they refine the concept, and file incremental provisional applications to protect new innovations.

Inventors typically experiment with a number of different embodiments of an invention as they refine it for a market introduction. Many of these different embodiments would ultimately make viable products, although in the short run the inventor may choose just one embodiment because of the need to focus on a single candidate or because of unsolved technical problems. All of these embodiments are part of the invention even though all may not be immediately productized. Inventors should record all of these embodiments and provide them to their patent attorney when it is time to convert the provisional application. This will help prevent the unintentional exclusion of viable embodiments from the utility application.

When refining and productize in an invention, inventors often solve a number of implementation problems. Many of these solutions seem insignificant, but they may be important in providing further protection for the invention. Inventors should note these implementation details and discuss them with their patent attorney when it is time to convert the provisional application. The inclusion of these implementation details can greatly strengthen a patent.

In highly competitive markets such as the development of Medical Devices, a few weeks difference in the priority date of a patent application can be the difference between receiving broad, valuable protection for the invention and being forced to settle for narrow protection or no protection at all. This is the primary reason for filing a provisional patent application, to establish an early priority date. However, in the refining and development of an innovation, inventors typically create many additional inventive elements that will not have the benefit of the original provisional's priority date. These additional inventive elements often prove to be as valuable as the original idea. Inventors should consider filing incremental provisional patent applications to secure the earliest possible priority date for these additional innovations.

Recording alternate embodiments, noting implementation details, and filing incremental provisional applications after the filing of an original provisional application assures that all of the invention's subsequent inventive elements will be included in the utility patent application with the earliest possible priority dates.

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Scott Thorpe

Kunzler IP

Scott D. Thorpe is an electrical engineer, MBA, and registered patent attorney. He regularly prosecutes successful software, electrical, medical device, energy, and health related patents. He has studied Chinese intellectual property law and commercial law at Ren Min University in Beijing, and speaks and reads Chinese. Prior to his legal career, Mr. Thorpe designed robots, launched the first PowerPC processor, introduced the first non-Intel processors into a major PC product line, and lead the Zip 250 development team. He has been part of two start-ups that had successful IPOs, and is the author of How to Think Like Einstein and Revolutionary Strategies of the Founding Fathers, and The Retirement Crisis.