Filing Multiple Provisional Patents Per Non-Provisional - Cesari-Reed
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06 Feb Filing Multiple Provisional Patents Per Non-Provisional

Why should you file multiple provisional patent applications? Because I told you so. You are welcome. Seriously, provisional patent applications can provide a substantial benefit due to the first-to-file system the US now has (and was a big benefit before also, since proving diligence was nearly impossible).  And I am not talking about filing one provisional and then waiting a year to file the non-provisional.  I am recommending filing multiple provisionals ASAP!  I have seen this strategy used extremely effectively to pre-date references that might have otherwise been considered prior art.

Here is the quick summary of the multiple provisional filing strategy:

  1. Interview Inventor(s)
  2. File a 2-4 page write up, and some drawings, as a provisional application ASAP after the inventor interview, including as much detail and as many variations as you have at that time.
  3. Prepare a complete patent application (intended to eventually be a non-provisional).
  4. File 2nd provisional when 1st draft of the complete patent application is sent to the inventor(s) for review.
  5. Finalize non-provisional patent application ASAP.
  6. File non-provisional patent application.

Ideally, this all happens within 60-90 days from the attorney receiving the invention disclosure.

Regarding the first provisional (and this is where I will argue with some of my peers), the provisional filing does not need to be a polished application document, it only has to do two things 1) disclose as many ideas (i.e. variations) as possible, and 2) provide enablement for those ideas.  I also recommend you include at least a single claim in the provisional applications in case you want to use the provisional filing for foreign priority.  Essentially, a first provisional filing should be a document and drawings that is a data dump, with as much explanation and summaries of the ideas as you can quickly put into the filing. This will get a filing date for at least the information disclosed and enabled in the first provisional.  I also usually include the invention disclosure or whatever design documents or presentations the inventor(s) can provide.

A second provisional should be filed the day the complete draft application is sent to the inventor for review. This can provide a claim to priority for any newly added subject matter added to the draft application after the application has been more carefully thought through and variations discussed with the inventor(s).  The second provisional filing can usually provide weeks or months of extra priority for the new subject matter before the non-provisional application is filed. In an industry of highly competitive patent filers, like computer hardware or software, a benefit of weeks or sometimes a few days can make a difference to determine whether another’s publication or patent filing is prior art to your application.

Also, this is a low cost solution to provide some good benefits.  As of the date of this post, filing the two provisionals would cost $520 total for a large entity, $260 total for a small entity, or $130 for a micro-entity.  See USPTO Fee Schedule.  Also, the cost of the attorney time for drafting the first provisional should only be about 4 hours of work. (If people are not efficient, why are you paying them?)

A provisional patent filing strategy you do not want to miss, why you should file multiple provisional applications for each non-provisional patent.