Intellectual Property Law

Chapter 18 Putting It Into Words Solution

Draft a paragraph to a client explaining the advantages of filing a provisional patent
application.

Inventors may file provisional patent applications with the USPTO. These
applications provide a relatively inexpensive and expeditious way of
embarking on patent protection. They provide inventors with a way of
obtaining an early filing date and allow inventors to mark their inventions
with the notice “patent pending.” The 20-year term for a utility patent begins
with the filing of the actual utility patent; thus, filing a provisional
application and then filing a later nonprovisional application allows
inventors to postpone the start of the 20-year patent term for as much as 12
months. Claims are not required (thus simplifying the filing process).
Moreover, while a provisional application is on file, you will have 12 months
to assess the marketability of your invention before committing to the higher
costs of filing a standard utility application. Please note, however, that a
provisional application is abandoned 12 months after its filing date. Thus,
before that 12-month period expires, you would need to determine whether
to pursue a standard utility patent application for your invention.