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19
Aug

Provisional or Nonprovisional Patent Application?

Thu Aug 19th, 2021 by  Business Law
 

Our team is often asked whether a provisional or nonprovisional patent application is the best option for a particular client.  Our answer is always the same—it depends.  Some of these factors include budget, timing, and goals.  

  • Budget

Provisional patent applications almost always cost less than nonprovisionals. Among other reasons, this is because provisionals have less formal requirements and do not include robust claim sets as do nonprovisional patent applications.  Clients with a limited budget often opt to file a provisional for this factor alone, with a goal to file the nonprovisional patent application within twelve months after raising investment or receiving positive cash flow.

 

  • Timing

Provisional applications generally take less time to draft than nonprovisional applications.  If our clients are in a hurry to get a filing date, we often lean towards a provisional.  Many of our clients have deadlines in which they must display or discuss the invention(s). For example, trade shows or conferences routinely create hard deadlines which necessitate quick action.  In these situations our clients generally file provisional patent applications in order to get a filing date before making any disclosures.

On the other hand, is the goal to receive an issued patent as quickly as possible?  Our clients seeking to enforce patent rights must receive an issued patent before filing a patent infringement suit.  They cannot bring a patent infringement action without one!  Similarly, clients seeking to license technology often desire one or more issued patents in order to command full royalties.  In these situations (and many others) we often file nonprovisional applications and skip provisionals altogether.

 

  • Goals for Portfolio

Understanding the reasons our clients desire a patent portfolio in the first place is critical to forming a proper strategy and deciding the type of application we should file.  Is the goal to fight off competitors?  If so, who are those competitors and what does their portfolio look like?  Is the goal to obtain as many patents as possible for acquisition purposes? If so, how do pending applications play into valuation. Is this goal to have many broad pending applications in a new technical area during the research and development phase? 

Portfolio strategy plays a vital role when deciding the type of applications we file.

 

Tailored Patent Strategies

Our team works hard to understand our clients’ inventions and business goals.   Once we understand their business, we work just as hard to understand their competition.  We routinely perform patent searching and landscape analysis to highlight target areas for protection and highlight white spaces for future research and development.  We consider many factors, including those discussed above, as we work with clients through various phases of their IP journey.  From seed to acquisition and licensing, our team has comprehensive experience creating tailored IP solutions, including helping our clients decide whether a provisional and nonprovisional patent application is the best option.