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Published June 20, 2024

Catherine Cavella, ESQ.

Confusion often arises regarding the term “provisional patent.” Clients frequently approach me intending to secure a provisional patent, only to learn that such a thing does not exist. Rather, they are referring to a provisional patent application. This distinction is crucial to understand, as it marks the beginning of a process rather than an endpoint.


To grasp the concept fully, imagine the provisional patent application as akin to taking a number at a deli counter. It serves as a placeholder, a ticket that reserves your place in line. Your provisional application holds your spot in the patent queue as you hold onto your deli ticket. However, it’s essential to recognize that this provisional application will only partially evolve into a patent. Instead, it is a precursor to the non-provisional application, which must be filed within a year of the provisional filing date.


The true value of a provisional application lies in its ability to establish priority. By securing your place in line, you can rest easy, knowing that your invention is shielded from theft or exploitation. Whether you’re showcasing your invention at trade shows or soliciting quotes from manufacturers, the presence of a provisional application provides a robust defense for your intellectual property rights.


Should someone attempt to infringe upon your idea, having a provisional application establishes your precedence in the patent process. Even before the issuance of a patent, you hold a position of authority, deterring potential infringers and providing a foundation for legal recourse if necessary.


Furthermore, the provisional application can be a potent tool in negotiations. With the assurance of pending patent protection, you can use this status to your advantage, compelling potential infringers to the negotiation table. A well-crafted cease-and-desist letter, backed by the imminent threat of patent infringement litigation, often elicits swift compliance from infringing parties.


However, the efficacy of such measures depends on the strength of your case. A solid patent infringement claim and the prospect of substantial damages increase the likelihood of a favorable settlement. In cases where infringement is blatant and intentional, legal counsel often advises infringers to seek a licensing agreement to mitigate potential liabilities.


In summary, the provisional application is a crucial stepping stone to the non-provisional patent, establishing priority and safeguarding intellectual property rights. While it may not provide immediate patent protection, it lays the foundation for future legal action and negotiation. Grasping this distinction is essential for inventors navigating the competitive landscape of intellectual property, ensuring they are well-equipped to protect their innovations.

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Since 1992, Catherine Cavella, Esq. Her focus on Trademark Law and Copyright Law for the last few decades gives her deep insights into the fundamental principles behind the rules. Catherine regularly writes about new developments in trademark law, copyright law, and internet law.